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Intellectual Property Report

Client Updates

Authentication of Prior Art References During IPR Proceedings Need Not Be Supported By Expert Testimony
Ashwat Rishi
The United States Court of Appeals for the Federal Circuit recently held in Valve Corp. v. Ironburg Inventions Ltd. that, in the absence of expert testimony, the Patent Trial and Appeal Board (“PTAB”) has an obligation to compare a copy of an alleged prior art document with an authenticated specimen, particularly where the comparison is not burdensome.
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Fair's Fair: SCOTUS Breathes New Life Into Assignor Estoppel
Robert Maier
In a June decision, the Supreme Court in Minerva Surgical v. Hologic, 141 S. Ct. 2298 (2021), breathed new life into the doctrine of assignor estoppel, a centuries-old doctrine based in fundamental fairness principles, that limited an inventor's or an assignor's ability to invalidate a patent it once owned and then transferred for value. But, while the Supreme Court rejuvenated the aging doctrine, it also limited the scope of its application, permitting assignors in certain situations to challenge the validity of the assigned patent in situations where fairness principles should allow.
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*This article was previously published in the New York Law Journal on September 20, 2021.

Importance of Accurate Translation of Non-English Priority Patent Applications
Dr. Michael Sartori, Chris Hong
Can a U.S. patent be invalidated due to an inaccurate translation of the non-English priority patent application? The answer is most definitely “Yes.” This article examines the recent Federal Circuit decision in which this occurred, IBSA Institut Biochimique, S.A. v. Teva Pharm. USA, Inc., 966 F.3d 1374 (Fed. Cir. 2020), and discusses the procedural framework on how to prevent and correct such a problem.
To read the full article, click here.
*This article was previously published in IPWatchDog on September 14, 2021.

The FTC’s Repair Restriction Ambition May Face Friction
Taylor Owings, Steve Maule
The Federal Trade Commission (FTC) has pledged to use more of its enforcement resources to ensure that consumers are free from manufacturer-imposed restrictions on self-repair or third-party repair. Just last week, the Democrat Commissioners voted to give the new Chair, Lina Khan, blanket authority to issue compulsory process in any investigation of “unfair, deceptive, anticompetitive, collusive, coercive, predatory, exploitative, or exclusionary acts or practices . . . related to any repair restrictions.” The breadth of that resolution suggests the FTC is poised to press this issue to the maximum extent allowed under the law. The unanswered question is: how far does the law allow the FTC to go?
To read the full article, click here.
*This article was previously published in IPWatchDog on September 22, 2021.

September 2021 Intellectual Property Report Recap
In case you missed it, here is a recap video of our September 2021 Intellectual Property Report that looked at:
- Patent Venue: Mapping the Contours of “A Regular and Established Place of Business”
- End of an Era of “No Consequences” for “Made in USA” Fraudsters, with New FTC Labelling Rule
- Podcast: Patent Venue Challenges: What Discovery Can You Expect in Light of Expanded Remote Work?

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