WilmerHale’s Post

In the latest landmark for the UPC, the Court of Appeal has weighed in on substantive issues of infringement and validity for the first time. In doing so, it has overturned a preliminary injunction and yet simultaneously confirmed the UPC as a venue of choice for such measures. Read our summary of the key issues below. #intellectualproperty #upc #patents https://lnkd.in/evGDcm_j

The U.S. Court of Appeals for the Federal Circuit recently confirmed that a substantial question of patent invalidity is required to defeat a preliminary injunction against infringement. Learn more about this ruling and key takeaways: https://lnkd.in/gfNtvdcg #BTLawNews #IntellectualProperty

Today, I had the distinct honor of being one of Joseph Matal's photobombers as he participated in a panel addressing proposed PTAB reform in the PREVAIL Act sponsored by Senators Coons and Tillis. He did a great job explaining some of the pitfalls of the Act. Here were two observations from the experience: 1. Everyone in the room was operating under a different set of facts. ◾ Those in favor of PTAB reform believed patent owners in IPRs are small inventors and entrepreneurs being crushed by big companies trying to steal their IP. ◾ Those against PTAB reform believed patent owners in IPRs are bad actors filing nuisance lawsuits hoping for a payout through judgment or settlement but never contributing to the industry. Seems if we can come to an agreement on which of those are true, or at least more prevalent, we could also come to an agreement on PTAB reform. 2. If the PTAB is invalidating more patents than we would like, that can really only be caused by one of two things. Either: ◾ The Patent Office is issuing invalid patents and the PTAB is correctly killing them (PTAB is fixing the PTO's mistakes) OR ◾ The Patent Office is issuing valid patents and the PTAB is incorrectly killing them (PTAB is messing up PTO's correctly issued patents) If it is the latter, I'm going to need some more evidence than just "look at all these invalidated patents." We need something that shows the PTAB is actually getting something wrong. At the end of the day, hopefully we can all agree that no one should be able to sue someone else with an invalid patent. That's my hot take of the day! And if you're one of those crazy people who enjoy listening to patent lawyers talk about patent law, you can watch the whole thing here: https://lnkd.in/gARPBPjk

Prior to the PTAB, Masimo patents withstood every challenge in Court and the USPTO. Those challenges were extensive, by well-funded large companies such Nellcor, now part of Medtronic, and Philips Medical. Thus, Masimo’s patents were subjected to intense scrutiny from millions of dollars of attacks by very competent, well-paid lawyers. Yet, Masimo’s patents survived all of those attacks. Compare that with what happened at the PTAB with Apple. Apple filed 33 inter-partes review (IPR) petitions on 22 Masimo patents. Apple challenged 473 claims, of which 343 were held invalid by the PTAB. The judges that invalidated hundreds of property rights previously granted by the U.S. Government had no particular background in pulse oximetry. Yet they decided that the primary examiner with almost 3 decades of expertise in the field of the invention and the pre-existing technology, had gotten it wrong about 80% of the time. This is the same examiner that issued other Masimo patents that withstood rigorous legal challenges in Federal Courts. We spent over $13 million defending our patents in these IPRs filed by Apple. How many companies could afford such an expense? We have no doubt that these patents struck down by the PTAB would have been upheld before an Article III judge and jury and normal patent validity challenges at the patent office, just as all Masimo patents in the past. https://lnkd.in/ghiWdXxG

An ambiguous decision by the Supreme Court has paved the way for frivolous petitions for compensation and clarity is needed, say Daniel Sanchez y Bejar and Karla Araceli Olvera Olivares of Olivares. Read more here: https://ow.ly/L10b50QcsA3 #Patents #compensation #Mexico #SupremeCourt

The USPTO continues to move forward with fee adjustments for 2025, sharing a Notice of Proposed Rulemaking on April 3. Click the link below to read how this could have a potential impact on #patent prosecution strategies. #USPTO #IntellectualProperty

Interesting questions raised...to my impression the third question is most important for further prosecution practice. Mostly defintions given in the description have to be acknowledged for interpretation of claims.

The USPTO continues to move forward with fee adjustments for 2025, sharing a Notice of Proposed Rulemaking on April 3. Click the link below to read how this could have a potential impact on #patent prosecution strategies. #USPTO #IntellectualProperty

The USPTO continues to move forward with fee adjustments for 2025, sharing a Notice of Proposed Rulemaking on April 3. Click the link below to read how this could have a potential impact on #patent prosecution strategies. #USPTO #IntellectualProperty

The USPTO continues to move forward with fee adjustments for 2025, sharing a Notice of Proposed Rulemaking on April 3. Click the link below to read how this could have a potential impact on #patent prosecution strategies. #USPTO #IntellectualProperty