Litigation and Dispute Resolution
2016-04-05  The Interplay between Indefiniteness and Inter Partes Review
Inter partes review (“IPR”) is an extremely effective alternative or supplement to litigation, and there are appreciable benefits to challenging an issued patent in an IPR rather than before a federal district court. In an IPR, unlike a patent lawsuit, a challenged patent is not presumed to be valid, nor is clear and convincing evidence required to demonstrate invalidity. Rather, the challenger (Petitioner) need only demonstrate invalidity by a preponderance of the evidence.

2016-02-03  IPR: Statistics Continue to Favor Petitioner's Perspective
Inter partes review (IPR) is a powerful alternative or supplement to patent litigation that permits a party to challenge a patent's validity before the Patent Trial and Appeal Board (PTAB). In fact, the concurrent use of IPR in connection with federal district court patent litigation has become so pervasive that many patent infringement litigants now consider IPRs to be a de facto counterpart to such litigation.

2015-12-01  Are Patents More Vulnerable to Indefiniteness Challenges?
Over a year ago, the U.S. Supreme Court handed down Nautilus v. Biosig Instruments, 134 S. Ct. 2120 (2014), replacing the Federal Circuit's "insolubly ambiguous" standard with a "reasonable certainty" standard for analyzing whether patent claims are "definite." Since then, several district court and U.S. Court of Appeals for the Federal Circuit decisions have confirmed that the standard has definitively changed.

2015-07-01  A Silver Bullet For Software Patents: One Year On, Alice Motions Remain An Important Defense Against Patent Infringement Claims in Federal District Courts
Issued on June 19, 2014, the Supreme Court’s opinion in Alice Corp. v. CLS Bank shifted the balance of patent infringement litigation by unanimously holding that merely implementing an patent-ineligible abstract idea on a computer does not render the idea patent eligible. Since then, the number of federal district court opinions applying Alice to invalidate software patents has skyrocketed and shows no signs of slowing down. With a success rate approaching 75% for motions decided in 2015, Alice-type challenges have become an essential part of any patent litigation defense strategy.

2015-06-03  One Year After Octane Fitness – Is Fee-Shifting An “Exceptional” Risk For Patent Trolls?
Last year, the Supreme Court issued a number of landmark decisions which can be argued as geared towards reforming patent litigation and, in particular, towards curbing questionable litigation strategies, typically associated with patent trolls.

2015-02-04  Potential Consequences for Patent Challengers Filing with the PTAB
As an alternative to litigating in federal court, the America Invents Act (“AIA”) vests the U.S. Patent Trial and Appeal Board (“PTAB”) with power to conduct post-grant proceedings in which accused infringers can challenge a patent’s validity in a trial-like procedure at the Patent and Trademark Office.[1] Considered a quicker and more economical route, post-grant proceedings have dramatically altered the United States patent litigation landscape in the last two years.

2013-01-10  How to Out-Nuisance a Bank Patent Troll
As financial institutions race to capture a portion of the increasingly popular online and mobile banking markets, they are going to be targeted by patent owners in litigations across the country. There are, however, approaches they can take to protect themselves and their customers.

2012-10-03  Economics and Logic of Patent Litigation Versus Post Grant/Inter Partes Patent Review
Shareholders Thomas Southard and Paul Prestia published their analysis of the economics of the new AIA procedures for PTO reconsideration of patent validity versus court-based validity challenges in the October 3 issue of the Legal Intelligence and in ALM’s online website. Their conclusion is that, once you get over the sticker shock of the new government fees, the PTO post grant procedures may be cost justified.

2012-08-17  Final AIA Rules for Post Grant Review, Inter Partes Review and Transitional Program for Covered Business Method Patents
Post Grant Review, Inter Partes Review and the Transitional Program for Covered Business Method Patents were instituted with the goal of improving patent quality by giving third parties methods to challenge patents that are less expensive and less involved than litigation.

2010-04-20  Beyond Decision Trees: Determining Aggregate Probabilities of Time, Cost, and Outcomes
Decision Tree Analysis facilitates complex decision-making. In addition to its use in commercial settings and economics departments, for example, “DTA” works well in the legal environment.

2009-12-21  How Reexamination Proceedings at the USPTO Impact the Strategy and Conduct of Patent Litigation
One of the significant developments to our patent system in the past 30 years has been the implementation of ex parte and inter partes reexamination.

2009-10-07  Juries May Have Less Say on Patentability
Lauren Schmidt joins Paul Prestia for his latest column in the Legal Intelligencer: Juries May Have Less Say on Patents. If you are a proponent of patents and the patent system and you think patents have gotten a rough ride from the Supreme Court in the last few years, brace yourself for another jolt.

2007-09-05  Liability for Foreign Manufacturing, and We Are Not Talking About Lead Paint
The flurry of Chinese-manufactured products brought under scrutiny lately has heightened our awareness about overseas manufacturing generally, but to date most of this concern has centered around product liability.

2007-04-01  Federal Discovery Rules Amended - No “Disk” Left Unturned
On December 1, 2006, the Federal Rules of Civil Procedure (FRCP) were amended to explicitly recognize that businesses have moved from the paper age to the electronic age.

2002-03-23  Is Litigation Manageable?
The Problem With Litigation Is That . . .

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