• January 27, 2017
      In Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, (PTAB March 5, 2013), the Board set forth five factors—commonly referred to as the Garmin factors—for determining whether “additional discovery” will be granted to a party during a proceeding before the Board, such as an inter partes review (IPR) covered business method review (CBM) or...
    • October 06, 2016
      It was known that the Patent Trial and Appeal Board (“PTAB”) rarely grants a patent owner’s motion to amend claims during inter partes review (IPR) proceedings, and there is no exception in an IPR proceeding involving Veritas Technologies LLC and Veeam Software Corporation (No. IPR2014-00090).  In view of the PTAB’s recent denial, Veritas appealed to...
    • September 26, 2016
      When a particular patent is involved in an inter partes review (IPR) proceeding or other post-grant review proceeding, the USPTO has wide discretion in determining whether to allow an additional proceeding to be instituted or continued.  The two governing statutes are 35 U.S.C. §315(d) and 35 U.S.C. §325(d), each of which states that “the Director...
    • September 02, 2016
      On June 13, 2016, the Patent Trial and Appeal Board (PTAB) entered its first Final Written Decision in a Post Grant Review (PGR) proceeding. The PTAB found that the Petitioner had failed to show unpatentability based on prior art, but the PTAB agreed with the Petitioner that all claims are directed to unpatentable abstract ideas...
    Patent Office Trials Blog
    • 3/24/2017
      Sughrue has once again made it among the elite patent litigation firms to make the "Top Tier" rank in the annual U.S. News and World Report Best Lawyers rankings. Sughrue was recognized in the Best Law Firm top tier rankings in the areas of Intellectual Property Litigation and Patent Litigation. Sughrue has obtained the coveted “Tier 1” ranking for four consecutive years.

      Best Lawyers is the oldest and most prestigious peer-review publication in the legal profession. Attorneys are peer-nominated and evaluated by a panel of attorneys within their practice area. Nominations are put through a rigorous evaluation process which includes client feedback regarding responsiveness, understanding of business and its needs, cost effectiveness and civility.

      Sughrue Mion, based in Washington D.C., is a leading global intellectual property firm, counseling clients as they navigate the complexities of patent and trademark law. Sughrue’s practice is focused solely on intellectual property law, including counseling, prosecution, licensing, litigation, portfolio management and enforcement. Sughrue brings unmatched experience in patent interference proceedings and Post Grant Review, including ex parte and inter partes reexamination proceedings. In addition to their legal expertise, Sughrue’s attorneys have technical and scientific backgrounds ranging from electrical and computer technology to biotechnology and pharmaceuticals, allowing for a true understanding of their clients’ business challenges and goals.
    • 3/7/2017
      On February 22, 2017, the Supreme Court in Life Technologies Corp. Et. Al. v. Promega Corp., No. 14-1538, 2017 WL 685531, held that exporting a single component of a patented multicomponent invention from the U.S. for combination with other components for distribution and sales outside of the U.S. does not raise patent infringement liability under 35 U.S.C. § 271(f)(1). The Supreme Court reversed the Federal Circuit's decision that exporting a single important component of a patented multicomponent invention is substantial enough to invoke patent infringement under 35 U.S.C. § 271 (f)(1). 2017 WL 685531 at *1.
    • 1/25/2017
    • 12/20/2016
      The Court of Appeals of the Federal Circuit issued a Decision on December 20, 2016, upholding four PTAB rulings (IPRs 2014-01026, 01079, 01101, and 01202) in favor of Sughrue client NHK Seating of America, Inc. In the Decision, the Court affirmed the PTAB’s findings that certain claims in 4 patents owned by Lear Corp. and directed to active head restraint systems for automobiles, were unpatentable. The patents at issue were U.S. Patent Nos. 5,378,043; 6,631,949; 6,655,733; and 6,631,955.

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