Insights
Search Results
Newsletters
10.22.24
The PTAB Review - October 2024
The PTAB Review begins by exploring collateral estoppel from unpatentability determinations in inter partes review (IPR) proceedings. Next, it summarizes recent developments at the U.S. Patent and Trademark Office relevant to IPRs and other PTAB proceedings. Finally, it reviews a recent Federal Circuit decision addressing expert qualifications as relevant to PTAB proceedings.
Client Highlights
8.23.24
Wilson Sonsini Secures Complete Victory for Scale Computing in Patent Infringement Trial
On August 22, 2024, Wilson Sonsini Goodrich & Rosati secured a complete jury victory in a patent infringement trial in the U.S. District Court for the District of Delaware on behalf of firm client Scale Computing, Inc. Following a four-day trial, the jury unanimously found that Scale Computing’s accused products, including the Scale Computing Platform and its Scale Computing Reliable Independent Block Engine (SCRIBE), did not directly or indirectly infringe DataCore Software Corp.’s data storage patent (U.S. Patent No. 9,344,235). The jury also found all of DataCore’s asserted claims invalid as anticipated by the prior art.
Newsletters
8.21.24
The PTAB Review - August 2024
This issue of The PTAB Review begins by providing an analysis of how institution decisions consider declaration testimony submitted by a patent owner. Next, it summarizes proposed rulemaking from the United States Patent and Trademark Office (USPTO) about practices at the PTAB, including discretionary denial of institution. Third, it summarizes a USPTO decision providing guidance for patenting antibodies using means-plus-function claims. Finally, it reviews a recent precedential Federal Circuit decision cautioning against an overly rigid approach to obviousness.
Bylined Articles
7.12.24
James Yoon of Wilson Sonsini Explores How Generative AI Falls Short in Civil Jury Trials
Wilson Sonsini partner and a leading attorney in the firm’s patent trial and litigation practice, James Yoon, recently authored “Limitations of Generative AI in Civil Jury Trials,” featured on Law.com. In this insightful piece, Jim discusses the impressive advancements of Generative AI and its potential to revolutionize various fields, including law, by streamlining complex tasks with unprecedented speed and clarity. However, he emphasizes that despite these benefits, Generative AI is not yet suitable for courtroom use due to its inherent limitations.
Newsletters
4.08.24
The PTAB Review - April 2024
This issue begins by summarizing a recent Patent Trial and Appeal Board (PTAB) decision strictly applying the public availability standard for prior art references as a basis for denying institution. Next, we examine a recent appellate decision addressing the ability of a joinder petitioner to oppose a motion to amend that the primary petitioner elects not to oppose. Third, we consider prohibitions against incorporation by reference at the Federal Circuit and at the PTAB. Finally, we summarize recent United States Patent and Trademark Office formal guidance regarding the legal standards for determining obviousness.
Alerts
3.06.24
New York Redefines the Permissible Scope of Invention Assignment Provisions
Invention assignment provisions are fundamental in employment agreements. On one hand, they are the mechanism by which an employer takes ownership of important types of intellectual property employees create that relates to the job—potentially patentable inventions, which may be trade secrets unless patent protection is sought. In that manner, they safeguard important employer interests, including preventing potential disputes over ownership of key company inventions and ensuring that employers can make necessary representations about ownership of their intellectual property in corporate transactions such as financings and acquisitions. On the other hand, such agreements also provide boundaries under which employees can safely create unrelated intellectual property, such as when planning a new, future start-up company.
Newsletters
1.22.24
2023 PTAB Year in Review
Wilson Sonsini Goodrich & Rosati is pleased to present our 2023 PTAB Year in Review. We begin with a review of 2023 petition filings and outcomes at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office. We then provide a summary of notable developments at the PTAB, including recent precedential and director review decisions. Next, we explore several appellate decisions relevant to PTAB trials. After that, we examine potential trends regarding motions to exclude and secondary considerations. Finally, we provide an update on discretionary denials of institution for parallel litigation.
Client Highlights
9.22.23
Wilson Sonsini Secures Victory for Epistar in Patent Damages Trial
On September 15, 2023, Wilson Sonsini Goodrich & Rosati secured a complete jury victory in a patent damages trial in the U.S. District Court for the Central District of California on behalf of firm client and plaintiff Epistar in Epistar Corp. v. Lowe’s Home Centers LLC, No. 17-cv-3219-JAK. Following a three-day jury trial, the jury returned a complete victory for Epistar, awarding the requested running royalty rate of 4 percent and full royalty base that Epistar sought. Earlier in this case, another jury found each and every patent-in-suit both valid and infringed, findings that the trial court has already upheld.
Newsletters
9.08.23
The PTAB Review - September 2023
In this edition, we begin with a discussion of recent trends in sanctions practice at the Patent Trial and Appeal Board (PTAB). Next, we summarize several recent Federal Circuit decisions addressing various aspects of PTAB practice. Finally, we examine the interplay between statutory inter partes review estoppel and common law estoppel in district court.
Client Highlights
8.18.23
Firm Secures Federal Circuit Affirmance of PTAB Victory for Palette Life Sciences
On August 16, 2023, the U.S. Court of Appeals for the Federal Circuit affirmed a Wilson Sonsini Goodrich & Rosati victory for Palette Life Sciences, Inc. against two medical-device patents. Palette provides injectable, biodegradable spacers for protecting non-target organs from radiation treatments. Wilson Sonsini successfully challenged the two broad Incept LLC patents at the Patent Trial and Appeal Board (PTAB) on both anticipation and obviousness grounds. Incept appealed both decisions, challenging the anticipation and obviousness analyses, including arguments on teaching away and commercial success. At the Federal Circuit, Judge Schall (joined by Judge Taranto) affirmed the PTAB’s decisions, with a partial dissent from Judge Newman, who would have remanded some of the claims for further consideration by the PTAB. With this win, more cancer patients will have access to this important protective technology.
Wilson Sonsini partner T.O. Kong argued the case at the PTAB and the Federal Circuit, with support from Tasha Thomas, Lori Westin, Rick Torczon, Kathryn Robinson, and Robyn Moriarty.
Wilson Sonsini partner T.O. Kong argued the case at the PTAB and the Federal Circuit, with support from Tasha Thomas, Lori Westin, Rick Torczon, Kathryn Robinson, and Robyn Moriarty.
News Articles
5.25.23
Daily Journal Names Vern Norviel "Top Intellectual Property Lawyer 2023"
On May 17, 2023, Wilson Sonsini's Vern Norviel was honored as one of the top performing intellectual property attorneys working in patent litigation, trademark, and copyright by the Daily Journal in its latest special report, "Top Intellectual Property Lawyers 2023." The feature highlights Vern's career in intellectual property law mainly advising clients in the biotechnology industry.