Tamara Fraizer

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Restoring Balance: Increased Discretionary Authority of the PTAB Favors Patentees

The Patent Trial and Appeal Board (PTAB) is an administrative law body of the US Patent and Trademark Office (USTPO) that determines disputes over the issuance, reissuance, and cancellation of patent claims. The PTAB has become well known to patent litigants since the implementation in 2012 of new proceedings, including Inter Partes Review (IPR), for … Continue Reading

Discretionary Denial of Institution of an IPR Disfavored Where Litigation Already Stayed or Petitioner Stipulates to Estoppel

In 2020, the PTAB increasingly denied otherwise meritorious petitions for review under its discretionary authority, as my partner Steve Auvil and I recently discussed. Many such denials were made in view of co-pending litigation under the so-called Fintiv factors adopted last May. The reaction to the PTAB’s approach was vocal and divided, and the USPTO … Continue Reading

What a Great IDEA! Collecting Data on the Diversity of Patent Inventors

A bipartisan group of Senators, including the Chair and ranking minority member of the Subcommittee on Intellectual Property, has proposed legislation that would allow the US Patent & Trademark Office to collect demographic data on patent applicants. The bill, known as the Inventor Diversity for Economic Advancement Act of 2021 or, more simply, the “IDEA … Continue Reading

Twelve Cannabis Plant Patents and Counting

The year 2020 saw increasing acceptance of cannabis in the US, as indicated by legalization in another five states, proposed federal legalization, and the designation of cannabis (where available) as essential during the coronavirus pandemic. The United Nation’s recent reclassification of cannabis signals similar changes on a global scale. As a result of these changes, … Continue Reading

Participation of Women Inventors in the US Patent System Is Increasing Slowly but Surely

The US Patent and Trademark Office (USPTO) has issued an encouraging and informative 2020 Update to its February 2019 Progress and Potential profile of women inventors on US patents. The initial report documented trends in the proportion of patent inventors who are women (the “Women Inventor Rate”) and the proportion of patents that have at … Continue Reading

Effectively and Efficiently Managing Remote Depositions Requires Careful Thought

Courts are exercising their power under Rule[1] 30(b)(4) to order that depositions be taken remotely and by videoconference during these uncertain times of the coronavirus pandemic. Such orders reflect concerns about the progress of cases, as discussed in our prior blog, and the public health. With remote depositions being essential under current circumstances, attorneys need … Continue Reading

No Excuses: Remote Depositions Required in the Age of COVID-19

Today’s litigators are advocates and strategists, excelling in the application of rules, the art of negotiation, and the power of oral argument, and they use these tools to achieve the best possible outcomes for their clients. In the age of COVID-19, with stay-at-home orders in effect across much of the nation, litigators may have lost … Continue Reading

Squire Patton Boggs Celebrates World IP Day

Today is World IP Day, a day established by the World Intellectual Property Organization (WIPO) to “learn about the role that intellectual property (IP) rights play in encouraging innovation and creativity.” The theme for 2020 is “Innovation for a Green Future,” and WIPO’s website and magazine contemplate how various IP regimes matter for addressing climate … Continue Reading

Gender Diversity in Innovation Webinar and Toolkit

Most inventors named on patents are men – in the US, almost 90%. The disparity, discussed in a previous blog here, exceeds the underlying disparities in the education and advancement of women in science, technology, and engineering (STEM), suggesting that innovative contributions of women are not being patented. To assess and address this issue, the … Continue Reading

Moving Cases Toward Completion During the Coronavirus Pandemic: Has the Time Finally Come for Increased Reliance on Remote Hearings and Depositions?

As more and more courts grapple with the Coronavirus Public Health Emergency, many are issuing Administrative Orders with provisions for conducting business via teleconference or videoconference. Most courts and litigators are familiar with holding status conferences and discovery dispute hearings by phone conference. But what should courts and parties do about complex hearings such as … Continue Reading

Federal Courts that Hear Intellectual Property Cases Requiring Litigation at a Distance

In an effort to contain the COVID-19 outbreak, courts across the US are now limiting services to those that are essential and enforcing social distancing, especially in civil matters. We summarize here key provisions of the COVID-19 orders for twelve federal courts that commonly hear patent, copyright, trademark and/or trade secret cases. These courts are … Continue Reading

The Paucity of Women Inventors

In March, we celebrate Women’s History Month and International Women’s Day, acknowledging the role of women in American history and the achievements of women worldwide. In the world of intellectual property (IP), we remember those who invented frequency hopping spread-spectrum signaling, kevlar, center-track restraint systems for animals, and the paper bag, among other things. We … Continue Reading

Intel’s New Diversity Standards for Outside Counsel

In a November 2019 blog post, Intel’s Executive Vice President and General Counsel Steven R. Rodgers announced Intel’s new diversity requirements.[1]  “Beginning Jan. 1, 2021, Intel will not retain or use outside law firms in the U.S. that are average or below average on diversity.” Intel’s new “above-average” rule requires that firms doing work for … Continue Reading

Further Changes for Patent Validity Challenges at the PTAB May Favor Patentees

The America Invents Act’s creation of patent challenge proceedings to be conducted by the USPTO’s Patent Trial and Appeals Board (PTAB) provided a powerful tool for challenging patent validity outside of costly litigation proceedings. But recent events are changing the strategic advantage that such proceedings may hold for patent challengers.… Continue Reading

The Federal Circuit Shuts the Door on Use of Tribal Immunity in IPRs

The Federal Circuit has rejected Allergan’s ploy to shield its Restasis patents from the scrutiny of inter partes review by assigning them to the St. Regis Mohawk Tribe, finding that tribal immunity does not apply in such proceedings.  The case is Saint Regis Mohawk Tribe, Allergan, Inc., v. Mylan Pharmaceuticals Inc., et al., Case No. 18-1638, … Continue Reading

U.S. Supreme Court Opens the Door to Allow Patent Owners to Recover Foreign Lost Profits

The United States Supreme Court ruled on Friday that a patent owner can, at least in some situations, recover lost profits for the unauthorized use of its patented technology abroad.  The 7-2 decision in WesternGeco LLC v. ION Geophysical Corp. overturned the Federal Circuit’s opinion, which relied on the presumption against extraterritorial application of U.S. … Continue Reading

U.S. Corporate Defendants Incorporated In Multi-District States Reside Only In A Single District For Patent Venue Purposes

In the third important patent venue decision it has issued in the past week (In re: BigCommerce, No. 2018-122 (May 15, 2018)), the Federal Circuit has clarified the proper location for patent infringement suits against U.S. corporations whose state of incorporation is large enough to have multiple federal judicial districts.  According to the Court, a … Continue Reading

The USPTO Proposes to Interpret Claims in Post-Grant Proceedings in the Same Way as the Federal Courts, and to Consider Prior Claim Constructions by Courts

With IPRs here to stay, the USPTO is proposing to drop its BRI standard and interpret claims under the same standards as used by federal courts.  Specifically, the USPTO has proposed to change the standard for interpreting claims in inter partes review, post grant review, and covered business method patent proceedings conducted by the PTAB … Continue Reading

The Federal Circuit Will Decide Whether Sovereign Immunity Can be Used to Escape Patent Invalidation by the PTAB – If the Supreme Court Finds Inter Partes Review Constitutional

When Allergan assigned its Restasis patents to the Saint Regis Mohawk Tribe last September, so that sovereign immunity could be used to help prevent their invalidation by the Patent Trial and Appeals Board (PTAB), politicians and the public cried foul. This past month, after the PTAB decided that sovereign immunity did not apply and scheduled … Continue Reading

California Court Weighs In On Patent Venue In Multi-District States

As reported in our prior blog post, the Federal Circuit appears poised to decide whether a corporation can be sued for patent infringement in any federal district in its state of incorporation.  In a recent order in the Central District of California case of Realtime Data LLC v. Nexenta Systems, Inc., No. 2-17-cv-07690-28 SJO (JCx), the … Continue Reading

Federal Circuit To Decide Whether A Corporation Can Be Sued For Patent Infringement In Any Federal District In Its State Of Incorporation

The patent venue statute provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides.”  28 U.S.C. § 1400(b) (emphasis added).  In TC Heartland, LLC v. Kraft Foods Grp. Brands, LLC, 137 S.Ct. 1517 (2017), the Supreme Court held that a corporate defendant resides in the state … Continue Reading

Giving Defendants a Second Chance: Failure to Assert Improper Venue Prior to TC Heartland is Not a Waiver Under the Federal Rules

In its May 2017 decision in TC Heartland LLC v. Kraft Foods Group Brands, LLC, 137 S.Ct. 1514 (2017), the Supreme Court shocked the patent world by restricting the range of permissible venues in patent infringement cases for  domestic corporations.  (See our prior posts, here and here).  The Federal Circuit has now found – in … Continue Reading
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