Unmet Garmin Factor 3 Proves Fatal for Additional Discovery Request
By Emily Lamm and Matt Johnson In Polygroup Ltd. v. Willis Electric Co., Ltd., the Patent Trial and Appeal Board denied a Patent Owner request for documents already provided in a co-pending lawsuit but restricted from use by a protective order. IPR2016-01610, Paper...
EDTX Interprets Federal Circuit Precedent Narrowly, Recommends Applying §315 Estoppel Broadly
By Geoffrey Gavin and Marlee Hartenstein In Biscotti Inc. v. Microsoft Corp., Magistrate Judge Payne recommended that estoppel under §315(e) apply broadly against Microsoft in an upcoming patent infringement trial scheduled for early June 2017. No....
Secondary Considerations Carry The Day
By Dave Maiorana We have previously reported (on February 1, on March 1, and on March 30) how patent owners have seen a mixed bag of results in trying to convince PTAB panels that secondary considerations of non-obviousness were sufficient to outweigh a prima facie...
Are Inter Partes Review Proceedings Constitutional? The Federal Circuit Is Not Yet Ready To Decide
By Greg Castanias, Sasha Mayergoyz, and Stuart Yothers On May 11, 2017, with six of its twelve active judges authoring or joining separate opinions, the Federal Circuit denied a petition for an initial hearing en banc which asked the full Court to address the question...
Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer
In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents. See Aylus Networks, Inc. v. Apple Inc., No. 13-cv-04700-EMC,...