Articles Posted in News

The Patent Trial and Appeal Board (PTAB) has denied Juniper Networks’ second petition for inter partes review (IPR) challenging claims of Orckit Corporation’s US Patent 10,652,111, which covers deep packet inspection methods in software-defined networks. The decision, issued on December 11, 2024, was based on the Board’s discretionary powers under 35 U.S.C. § 314(a).

The Board’s denial relied heavily on the precedential General Plastic factors, which are non-exhaustive and guide decisions about multiple petitions against the same patent. In a detailed analysis of those factors, the Board found that Juniper’s second petition targeted essentially the same claims as its first petition, despite Juniper’s arguments to the contrary. The Board conducted a careful comparison of the challenged claims 32-54 with previously challenged claims 1-31, determining that they were either identical or had no material differences in scope.

Significantly, the Board found evidence that Juniper was aware of the prior art references (Lefebvre, Chua, and Rash) cited in its second petition long before filing its first petition. Patent Owner Orckit provided documentation showing Juniper’s knowledge of these references dating back to 2016-2020, contradicting Juniper’s unsupported assertion of recent discovery. Continue reading

In a noteworthy decision that sheds light on the interplay between patent disclaimers and post-grant reviews, the Patent Trial and Appeal Board (PTAB) recently denied institution of a challenge to an Intex Marketing patent while declining to enter adverse judgment against the patent owner.

On June 15, 2024, Bestway (USA), Inc. petitioned for post-grant review of all 24 claims in U.S. Patent No. 11,959,512 B2. In what proved to be a strategic maneuver, Intex Marketing responded by filing a statutory disclaimer of all challenged claims, effectively surrendering their rights to the patent. This move raised an important question for the Board: should they simply deny institution, or take the additional step of entering adverse judgment against Intex?  In its October 28, 2024 decision, the Board opted to take the former approach.

The distinction between these two outcomes carries significant implications for patent owners. An adverse judgment would trigger estoppel provisions preventing Intex from obtaining or enforcing patents with substantially similar claims. This became particularly relevant because the ‘512 patent belongs to a family that includes three other granted patents and pending continuation applications.

In deciding against adverse judgment, the Board emphasized several crucial factors. First, Intex had never asserted or threatened to assert the ‘512 patent against Bestway. While Bestway argued it had incurred “significant expense” preparing its petition in response to what it characterized as “harassing” cease-and-desist letters regarding related patents, the Board found this insufficient justification for adverse judgment. Continue reading

In a significant ruling that clarifies the standards for expert disqualification in patent litigation, the U.S. District Court for the Eastern District of California has denied E. & J. Gallo Winery’s motion to disqualify Dr. Mark Greenspan, an expert witness for Vineyard Investigations. The December 2, 2024 order provides crucial guidance on the treatment of technical information in expert disqualification analyses and the interpretation of protective orders in patent cases.

Case Background

The underlying dispute involves Vineyard Investigations’ allegations that Gallo infringed patents related to variable rate drip irrigation systems. The controversy arose when Vineyard Investigations designated Dr. Greenspan, a former Gallo employee, as an expert witness. Dr. Greenspan had worked for Gallo between 1996 and 2005 as an irrigation specialist and Winegrowing Research and Development Manager.

Key Legal Framework

The court’s analysis centered on two potential grounds for disqualification, as articulated in the order:

“There are two relevant bases on which Defendant moves Dr. Greenspan be disqualified: (1) an exercise of a trial court’s inherent discretion and (2) pursuant to Section 2.6 of the protective order.”

The court emphasized that “disqualification is a drastic measure that courts should use reluctantly and rarely,” setting a high bar for excluding expert testimony.

Critical Holdings

Continue reading

On July 26, Stan Gibson will participate in a Strafford webinar discussing considerations that need to be taken into account when in-house counsel is noticed or subpoenaed for a deposition. Program details and a registration link are below. We hope to see you there!

Taking or Defending Depositions of In-House Counsel: Strategic, Substantive, and Ethical Considerations

Date: Tuesday, July 26, 2022

This weekend I took part in the 4x4x48 challenge created by David Goggins— running 4 miles every 4 hours for 48 hours for a total of 48 miles. At times, the run was both exhilarating and exhausting, particularly those midnight and 4 am runs on minimal sleep. The donations and wide ranging support fueled my inspiration to complete the challenge!

A special thanks to the many donors and supporters that helped me raised over $13,000 for the Special Forces Warrior Foundation. Their mission is to provide educational support for the surviving children of Special Operations personnel who lose their lives in the line-of-duty and the children of Special Operators awarded the Medal of Honor and to provide immediate financial grants to severely wounded, ill, and injured Special Operations personnel who require hospitalization. A link to the donation page is: https://give.specialops.org/campaign/stan-gibsons-4x4x48-challenge/c324132

Thank you,

A common refrain is that an invention is only as valuable as the patent that protects it. But what happens when you cannot secure the patent? This is a frequent hurdle for inventors seeking to patent products utilizing artificial intelligence (AI). While still in its infancy, at least compared to the lofty expectations of technology enthusiasts, AI has proven integral to driving innovation, but it has also proven equally vexing to fit into the intellectual property legal regime.

In the article, “How to Safeguard AI Technology: Patents versus Trade Secrets,” JMBM attorneys Stanley M. Gibson and Samuel R. Buchman discuss the potential advantages of using trade secret protection where patent protection cannot be obtained.

Read the article on IPWatchdog.com. Continue reading

On March 2, Stan Gibson will host a free webinar exploring the issue of false advertising, how it can harm your company, and how you can resolve problems resulting from competitors’ misleading statements. Details on the program and a sign-up link are below. Please join us!

How to Defend Your Company Against False Advertising

Date: Tuesday, March 2

Read our update on Stan’s 4x4x48 Challenge here.

Next month, Stan Gibson, Chairman of JMBM’s Patent Litigation Group, will run the 4x4x48 for the Special Operations Warrior Foundation. Read his message below.

Like many of you, I have wondered what I can do to help our country and the people in need during the pandemic. After recently reading the book, Can’t Hurt Me by David Goggins, a former Navy seal, I became inspired to run the 4x4x48 challenge on March 5, 2021 at 8 pm through March 7, 2021 at 8 pm.

The 4x4x48 challenge consists of running 4 miles every 4 hours for 48 hours. I’ll be running to fundraise for the Special Operations Warrior Foundation. Their mission it is to help fallen and wounded special operations forces and their families, which is particularly important to me as I have had a number of family members serve in the forces in Iraq and Afghanistan. Continue reading

In a decision published on April 27, 2020, the United States Patent and Trademark Office determined that only a human can be considered an inventor. So, who owns the patent when artificial intelligence makes the invention? What are the practical and logistical complications inherent in artificial intelligence-created inventions? With technology advancing faster than the legal system, what can we expect moving forward?

Stanley M. Gibson, Chair of JMBM’s Patent Litigation Group discusses these issues in the article, “What Happens When Artificial Intelligence Invents: Is the Invention Patentable?” published in the Vol. 41 No. 4 issue of AI Magazine.

Read the article. Continue reading

Upcoming webinar: When Artificial Intelligence is the inventor, who owns the patent?

Join us for a one-hour webinar on the topic, “When AI is the inventor, who owns the patent?”  Register now.

Who Should Attend:  General Counsel, Patent Counsel

Date: Tuesday, October 20, 2020

Time: 11 AM – 12 PM Pacific Time

Description:

Companies that develop products and services employing artificial intelligence (AI) face unique opportunities and challenges. One such challenge is patenting inventions created by AI.

This one-hour webinar will focus on the issue of whether AI can be considered an “inventor” under United States patent law. We will discuss recent developments and the implications that can be drawn from the rejection by the U.S. Patent Office of inventions created by AI. A question and answer period will be included. Continue reading