Search Results for: expert

PTAB Appellants May Improve Outcomes by Filing Supplemental Expert Declarations

On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling … Continue Reading

Experts in the USPTO: Not Just for IPRs?

In post-patent issuance proceedings before the US Patent and Trademark Office (USPTO) – inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) – parties almost invariably submit expert testimony. Depending on the type of post-issuance proceeding, the testimony can relate to prior art, claim construction, patent-eligibility, or formal requirements for patentability including … Continue Reading

Supreme Court Clarifies That, Yes, You Have to Register Your Copyright, and No, You Cannot Recover Your Expert Witness Fees in Copyright Cases

In a pair of unanimous rulings on March 4, 2019, the Supreme Court clarified (1) that the U.S. Copyright Office must issue a registration certificate before a plaintiff can commence suit and (2) that a prevailing plaintiff cannot recover fees for expert witnesses, jury consultants or other “costs” that are not specifically called for in … Continue Reading

Plaintiffs Beware – Disclose all Evidence of Lost Profits Damages During Discovery

In a patent infringement lawsuit, a plaintiff often seeks to recover lost profits damages—the profits that the patent owner would have made but for the competitor’s alleged infringement—instead of a lower reasonable royalty. A plaintiff is not automatically entitled to such damages, though, even upon a finding of infringement. Rather, the patent owner must prove … Continue Reading

Litigators Take Note – Yu v. Apple is Not Just About Subject Matter Eligibility of Patents

Much of the discussion about the Federal Circuit’s precedential opinion in Yu et al. v. Apple, Inc. et al. has focused on the perceived confusion and dysfunction of U.S. patent law that invalidates a claim directed to an “improved digital camera” as a patent-ineligible “abstract idea.” After delving into the underlying record, this author posits … Continue Reading

Caution! Technical Documents Concerning Efforts to Design Around a Patent Are Discoverable — Even When Done at the Direction of Counsel

A recent order from a patent infringement lawsuit in the Northern District of Illinois serves as a good reminder that factual information about attempts to design around a patent are generally discoverable. This case also distinguishes discoverable factual information from privileged opinion and mental impressions of design-around efforts. In addition, the order suggests “exceptional circumstances” … Continue Reading

Evidence Relating to Third Party Chips Better Be Good When It’s TV Time at the Federal Circuit: The admissibility of third-party source code as a business record under FRE 803(6)

In patent infringement cases involving consumer electronics and the like, the accused instrumentality oftentimes includes components the accused infringer obtained from third-party suppliers. To prove infringement, the patent owner may need discovery from the third party, such as source code, and that discovery would in turn be relied upon by the patent owner’s testifying expert. … Continue Reading

Beware! Reliance on Aspirational and Futuristic Statements in a Prior Art Reference May Require Supporting Evidence

In patent disputes involving complex technologies, especially when the disputed patent was developed in an early stage of the technical field, research papers and similar publications are oftentimes relied on to make obviousness-based invalidity challenges. It is common for such research papers to include predictions or aspirations with regards to potential future developments in the … Continue Reading

LexBlog