The Credibility of Experts Is in the Province of the Jury
Ari Feinstein & Kathryn M. McCarthy
Neither the fact that a damages expert’s testimony could have been presented more clearly, nor the fact that the methodology could be subject to reasonable disagreement, is a basis to exclude the expert’s testimony.
How Ignoring Disclosed Structure Can Derail a Means-Plus-Function Case
Douglas B. Wentzel & Stella B. Haynes Kiehn
The Federal Circuit affirmed summary judgment of noninfringement of means-plus-function claims where the patentee failed to justify omitting aspects of the disclosed structure in attempting to show that structure operated in substantially the same “way” as the accused products.
Software Claims Failed Alice Step One Where Purported Improvements Were Not Claimed
Software claims were directed to an abstract idea at Alice step one where the technical improvements described in the specification were not required by the claims.
Conflict of Interest Does Not Automatically Extinguish Attorney-Client Privilege
Even if an attorney would be disqualified from representing a client due to a conflict of interest, a court may not compel the disclosure of privileged communications because the conflict of interest does not automatically eliminate the attorney‑client privilege.
Corresponding Structure for a Means-Plus-Function Limitation Need Only Perform the Claimed Function, Not Other Unclaimed Functions
Disclosure of an additional function in the specification should not disqualify a structure that performs the claimed function of a means-plus-function limitation.
USPTO Director to Consider U.S. Manufacturing and Small Business Status When Instituting or Denying IPR and PGR Petitions
Effective immediately, the USPTO will consider whether a patent challenger’s accused products or a patent owner’s products are manufactured in the United States as additional factors in the discretionary denial process for inter partes and post-grant reviews.
Patent challengers and patent owners should address in discretionary denial briefing whether they manufacture products in the United States and how institution or denial of America Invents Act (AIA) proceedings would impact domestic manufacturing. Patent challengers with fewer than 500 employees should also self-identify as small businesses when opposing discretionary denial.
USPTO Joins DOJ in Supporting Permanent Injunctions for NPEs
Adam G. Copeland & Sean Murray
The U.S. Patent and Trademark Office doubles down on its current pro-patentee stance by filing a statement of interest in district court, arguing that permanent injunctions should be available to non-practicing entities. Although the PTO’s statement is not likely to lead to a sea change in the way courts treat injunction requests from NPEs, practitioners should be mindful that the PTO’s patent-friendly posture has extended into the enforcement realm.
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