Jo Dale Carothers, Ph.D.

Shareholder


Experience

Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group and a member of the Litigation group. She is an intellectual property litigator and registered patent attorney. Jo Dale advises clients on a wide range of intellectual property issues, including patents (ownership, infringement/non- infringement, validity/invalidity, patentability, and proceedings before the United States Patent and Trademark Office (USPTO)), trade secrets , trademarks, and copyrights. Her practice emphasizes intellectual property litigation, licensing, contract disputes, and issues related to proceedings before the USPTO in all fields but with a special emphasis on electronics, embedded systems and high performance computing, Wi-Fi enabled devices, energy management, microprocessors/ microcontrollers, memory devices, wireless communications devices and protocols, smartphones and smart TVs (along with applications), in- home networking for computing and entertainment, consumer electronics, semiconductor process and fabrication technology, packaging, power conversion, and software for numerous applications. Jo Dale has represented companies in litigation in numerous federal district courts and state courtsacross the country, the Federal Circuit Court of Appeals, and in Section 337 investigations in the United States International Trade Commission (ITC).

Before joining Weintraub Tobin in 2014, Jo Dale spent many years as a partner in Big Law firms. Prior to becoming an attorney, Jo Dale was a tenured professor of Electrical and Computer Engineering at the University of Arizona and served as an expert witness in intellectual property litigation. Her research lab at the University of Arizona developed patented technology that was used to decode images from Mars in the Mars Pathfinder Mission, which was the first of a series of missions to Mars that included rovers.

Jo Dale has been selected multiple times, including in the current year, as a San Diego Super Lawyer by Super Lawyers Magazine, and was named to the 2019 San Diego list of The Best Lawyers in America® for Intellectual Property Litigation.


Representative Matters

Note: confidential matters advising clients on pre-litigation IP issues, third-party subpoenas, licensing agreements, and patent prosecution issues cannot be listed, but the following list shows representative litigation matters.

Magnacross v. Novatel Wireless, Inc. (TXED). Representation of Novatel in patent litigation involving wireless data transmission systems.

CalAmp Wireless Networks v. Novatel Wireless, Inc. and Enfora, Inc. (TX State Court, 14th Judicial District, Dallas County). Representation of Novatel and Enfora in a contract dispute.

Envisiontec, Inc. v. Formlabs, Inc. (CACD). Representation of Formlabs in patent litigation involving 3D printing.

Anza Technology, Inc. v. Novatel Wireless, Inc. (CASD). Representation of Novatel in patent infringement litigation involving flip-chip bonding.

REGEN Energy Inc. (now Encycle Corporation) v. eCurv, Inc., (CASD). Representation of REGEN/Encycle in patent litigation involving energy management.

Silicon Storage Technology, Inc. v. National Union Fire Insurance Co. of Pittsburgh, PA et al., (CAND). Representation of Silicon Storage
Technology in an insurance coverage matter arising from settlement of trade secret litigation.

Silicon Storage Technology, Inc. v. Telefunken, (CAND). Representation of Silicon Storage Technology in patent litigation relating to process technology for memory devices.

Silicon Storage Technology, Inc. v. Intersil Corporation, et al. , (CAND). Representation of Silicon Storage Technology in this declaratory judgment action involving EEPROM and flash memory devices.

In the Matter of Certain Set-Top Boxes, Gateways, Bridges, and Adapters and Components Thereof, (ITC). Representation of Entropic Communications in this ITC investigation brought by ViXS Systems concerning set-top boxes, gateways, and in-home networking.

ViXS Systems, Inc. v. Entropic Communications, Inc., et al., (CASD). Representation of Entropic Communications in patent litigation involving set-top boxes, gateways, and in-home networking.

Entropic Communications, Inc. v. ViXS Systems, Inc., (CASD). Representation of Entropic Communications in patent litigation involving MoCA patents.

Blue Spike, LLC v. Texas Instruments, et al., (TXED). Representation of Entropic Communications in patent litigation involving automatic content recognition hardware and software.

In the Matter of Certain Digital Media Devices, Including Televisions, Blu-Ray Disc Players, Home Theater Systems, Tablets, and Mobile Phones, Components Thereof, and Associated Software, (ITC). Representation of Samsung in this ITC investigation concerning smartphones, smart TVs, and applications relating to sharing media and location-based services.

In the Matter of Certain Semiconductor Integrated Circuit Devices and Products, (ITC). Representation of Microchip Technology in this ITC investigation involving integrated circuit devices (chips).

Microchip Technology v. Intersil Corporation (AZD). Representation of Microchip Technology in this patent litigation involving integrated circuit devices (chips).

Greenliant Systems, Inc. v. Xicor LLC, (Fed. Cir.). Successfully argued at the Federal Circuit Court of Appeals for affirmance of the district court’s grant of summary judgment of invalidity of the asserted patent relating to EE-PROM and flash memory technology.

Microchip Technology v. LSI Corporation, (AZD). Representation of Microchip Technology in this declaratory judgment action for non-infringement and invalidity of the named patents.

Finisar Corporation v. Source Photonics, Inc. et al., (CAND). Representation of Source Photonics in patent litigation involving fiber optic components and modules used in telecommunication systems and data communication networks.

In the Matter of Certain Semiconductor Integrated Circuits Using Tungsten Metallization and Products Containing Same, (ITC). Representation of UMC, ProMOS, Microchip, and Microna in this ITC investigation concerning the use of tungsten metallization in semiconductor integratedcircuits.

Advanced Micro Devices v. Samsung, (CAND). Representation of Samsung in patent litigation involving circuit, microprocessor, and process patents.

Fortinet, Inc. v. Trend Micro Incorporated, (CAND). Representation of Trend Micro in patent litigation concerning anti-virus technology.

In re Certain Flash Memory Controllers, Drives, Memory Cards, and Media Players and Products Containing Same, (ITC). Representation of multiple respondents in this ITC investigation brought by SanDisk concerning flash memory devices.

Microchip v. ZiLOG, (AZD). Representation of Microchip in this lawsuit involving three Microchip microcontroller patents. These patents relate to reducing the pin count for microcontrollers.

Microchip v. Luminary Micro, (AZD). Representation of Microchip in this lawsuit involving three Microchip microcontroller patents. These patents relate to reducing the pin count for microcontrollers.

Maxim Integrated Products v. Freescale Semiconductor (CAND). Representation of Maxim in this action for declaratory judgment of no patent infringement.

Disc Link v. Oracle et al. (TXED). Representation of a group of defendants, including SAP, CA, Kodak, Altera, Novell and Sonic Solutions, in patent liti- gation regarding hyperlink technology.

Azul v. Sun Microsystems (CAND). Representation of Azul in litigation involving alleged trade secrets and alleged patent infringement.

ArrayComm LLC v. Atheros Communications Inc. (TXED). Representation of ArrayComm in a patent infringement suit involving three telecommunications patents relating to spatial multiplexing of signals to/from an antenna array.

Overture Services, Inc. v. Google Inc. (CAND). Representation of Yahoo! subsidiary Overture Services in a lawsuit alleging infringement of Overture’s pioneering paid search patent by Google’s top revenue-producing Internet advertising services. In a highly-publicized settlement, Google took a license to this patent and several related patents.

Overture Services, Inc. v. FindWhat.com, Inc. (CACD). Representation of Overture in a patent infringement lawsuit brought against FindWhat.com relating to Overture’s paid search technology.

Analog Devices v. Maxim Integrated Products (N.C. Super. Ct.). Representation of Maxim in trade secret litigation involving analog-to-digital converters.

Linear Technology Corp. v. Maxim Integrated Products. (CAND). Representation of Maxim in this patent infringement litigation related to voltage regulators.

Maxim Integrated Products v. Semtech Corp. (CAND). Representation of Maxim in patent infringement litigation alleging infringement of Maxim’s voltage regulator patents by Semtech.

Atmel Corporation v. Agere Systems, Inc. (CAND). Representation of Atmel in this patent infringement case involving digital signal processing chips.

Agere Systems, Inc. v. Atmel Corporation, (PAED). Representation of Atmel in this patent infringement case.

U.S. Philips v. Microchip, (AZD). Representation of Microchip in this patent infringement litigation involving serial bus interfaces.

U.S. Philips v. Cypress, (NYSD). Representation of Cypress Semiconductor Corporation in patent infringement litigation involving serial bus interfaces.

Recent Presentations and Publications

“Patent Eligibility: Navigating the Supreme Court’s 2016 Decisions and Its Impacts LIVE Webcast,” broadcast by The Knowledge Group, LLC, April 19, 2017.

Are the Tides Turning for Motions to Amend Claims in IPR Proceedings?,
IP Law Blog, April 13, 2017.

One Is Not Enough for Patent Infringement Under 35 U.S.C. §271(f)(1), IP Law Blog, March 2, 2017.

Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions
Two Key Things You Need to Know About the 2016 Federal Rule Changes,
IP Law Blog, January 19, 2017.

“What Every In-House Attorney Should Know About IP and is Afraid to Ask
– Part Two: Patents and Trade Secrets,” presentation to the Association of Corporate Counsel- San Diego Chapter, November 2016.

Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition? , IP Law Blog, October 27, 2016.

Is the Technology for Self-Driving Cars Patent-Eligible? , IP Law Blog,
September 15, 2016.

“What Every In-House Attorney Should Know About IP and is Afraid to Ask – Part One: Copyrights and Trademarks,” presentation to the Association of Corporate Counsel- San Diego Chapter, August 2016.

Wearable Technology Raises Concerns Regarding IP, Data Privacy and Data Security, IP Law Blog, August 4, 2016

The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims, IP Law Blog, June 21, 2016.

“Patent Eligibility: Navigating the Supreme Court’s Recent Decisions – 2016 Live Webcast,” broadcast by The Knowledge Group, LLC, June 2016.

New Federal Trade Secret Law Takes Effect! , IP Law Blog, May 31, 2016.

Are Pins, Posts, Tweets and Likes Appropriate for Use in Selecting Jurors? , IP Law Blog, April 1, 2016.

The Federal Circuit Finds Foreign Sales Do Not Exhaust Patent Rights, IP Law Blog, February 19, 2016.

“Emerging Issues: Reconsidering Intellectual Property in Cloud Computing in 2016 LIVE Webcast,” November 2015.

Institute of Electrical and Electronics Engineers (IEEE)
Senior Member

San Diego Intellectual Property Law Association (SDIPLA)
Immediate Past President and Board Member

Awards

The Best Lawyers in America ®, 2018-2021, San Diego, Litigation – Intellectual Property

San Diego Super Lawyer, from 2014 to 2019

J.D., summa cum laude, University of Arizona

Arizona Law Review, Articles Editor

Order of the Coif

National Moot Court Team

Ph.D., University of Texas, Electrical Engineering

M.S., University of Texas, Electrical Engineering

B.S., University of Texas, Electrical Engineering

Women Leadership in San Diego Intellectual Property

Attorney Jo Dale Carothers speaks at the Women Leadership in San Diego Intellectual Property event on Thursday, October 24, organized by the San Diego Intellectual Property Law Association. Please join us as the panelists provide their thoughts and perspectives about the past,

Read More

Live Webcast: Addressing and Identifying Challenges in Patenting Machine Learning Algorithms

Jo Dale Carothers, Ph. D. and Shareholder at Weintraub Tobin, will speak at the upcoming Knowledge Group webcast entitled “Addressing and Identifying Challenges in Patenting Machine Learning Algorithms.” Date and Time: The event will take place on Tuesday,

Read More

Postponed: Don’t Let Your IP Float Away in the Cloud!

Summary of Program Join attorneys from Weintraub Tobin’s Intellectual Property Group (Jo Dale Carothers and Audrey Millemann) for this 1 hour MCLE program. Program Highlights Overview of Cloud Computing and Cloud Storage Who owns the information in the Cloud?

Read More

17 Weintraub Tobin Attorneys Named to The Best Lawyers in America© and Ones to Watch 2021

Sacramento, CA (August 20, 2020) – Weintraub Tobin, a leading California full-service law firm, is pleased to announce that 17 attorneys were recognized in The Best Lawyers in America© 2021. This year Best Lawyers launched “Ones to Watch,” a recognition for attorneys earlier in their careers,

Read More

Weintraub Attorney Jo Dale Carothers Named to San Diego Super Lawyers® 2020 List

SAN DIEGO, CA (April 10, 2020) – Weintraub Tobin, a leading California full-service law firm, is pleased to announce that Jo Dale Carothers, Ph.D.  is a 2020 San Diego Super Lawyers honoree.

Read More

Jo Dale Carothers Quoted in Law360

Jo Dale Carothers was recently quoted in a Law360 article after a recent Precendential Opinion Panel decision for patent petitions for inter partes review (IPR) on whether copyright and ISBN are sufficient evidence for printed reference material as having been “publicly available”.

Read More

19 Weintraub Tobin Attorneys Named to The Best Lawyers in America© 2020

  SACRAMENTO, CA (August 15, 2019) – Weintraub Tobin, a leading California full-service law firm, is pleased to announce that 19 of our attorneys have been recognized on the 2020 The Best Lawyers in America list.

Read More

Weintraub Tobin Attorneys Selected for Inclusion in San Diego Super Lawyers/Rising Stars® 2019 List

Weintraub is pleased to announce that Jo Dale Carothers has been recognized as a 2019 San Diego Super Lawyer and Eric Caligiuri as a 2019 Rising Star. Jo Dale Carothers is a shareholder and chair of the firm’s Intellectual Property group.

Read More

19 Attorneys from Weintraub Tobin were recognized in The Best Lawyers In America ©2019

SACRAMENTO, California – August 15, 2018 – Weintraub Tobin congratulates its nineteen attorneys who have been included in The Best Lawyers of America© 2019 list. David Adams, Sacramento, Corporate Governance Law,

Read More

37 Weintraub Tobin Attorneys Named Among 2018 Super Lawyers and Rising Stars

Super Lawyers has released its Northern California, Southern California and San Diego lists of outstanding attorneys for 2018, on which 37 Weintraub Tobin attorneys have been included. Five Weintraub Tobin attorneys received special recognition as a Top 25 Sacramento Super Lawyer.

Read More

19 Attorneys from Weintraub Tobin were recognized in The Best Lawyers In America© 2018

SACRAMENTO, California – August 16, 2017 – Weintraub Tobin congratulates its nineteen attorneys who have been included in The Best Lawyers of America© 2018 list. David Adams, Sacramento, Corporate Governance Law,

Read More

36 Weintraub Tobin Attorneys Named Among 2017 Super Lawyers and Rising Stars

Super Lawyers has released its Northern California, Southern California, and San Diego lists of outstanding attorneys for 2017, on which 36 Weintraub Tobin attorneys have been included. Six Weintraub Tobin attorneys received special recognition as a Top 25 Sacramento Super Lawyer.

Read More

Four Weintraub Tobin Attorneys Recognized as “SuperLawyers” in Southern California

LOS ANGELES, CA (January 20, 2017) – Weintraub Tobin, one of California’s leading, full-service law firms, is pleased to announce that Eric Caligiuri, Jo Dale Carothers, David R. Gabor, and Gary Waldron have been named to the 2017 Southern California “SuperLawyers” list.

Read More

33 Weintraub Tobin Attorneys Named Among 2016 Super Lawyers and Rising Stars

Super Lawyers has released its Northern California, Southern California, and San Diego lists of outstanding attorneys for 2016, on which 33 Weintraub Tobin attorneys have been included. Three Weintraub Tobin attorneys received special honors in their respective regions.

Read More

The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims

Patent litigators and prosecutors have been waiting to hear whether the U.S. Supreme Court would require the United States Patent and Trademark Office (“USPTO”) to apply the same claim construction standard as the district courts. 

Read More

New Federal Trade Secret Law Takes Effect!

So what is a trade secret?  Generally, a trade secret is information that the owner has taken reasonable measures to keep secret, derives independent economic value from not being generally known,

Read More

37 Weintraub Tobin Attorneys Named Among 2015 Super Lawyers and Rising Stars

Super Lawyers has released its Northern California, Southern California, and San Diego lists of outstanding attorneys for 2015, on which 37 Weintraub Tobin attorneys have been included. Eight Weintraub Tobin attorneys received special honors in their respective regions.

Read More

Caligiuri Joins Weintraub Tobin as Of Counsel

By: Daily Transcript Staff Report Eric Caligiuri has joined Weintraub Tobin’s San Diego office as of counsel. Caligiuri advises domestic and international clients on complex intellectual property disputes and focuses on patent and trade secret litigation in federal district courts,

Read More

Weintraub Tobin Welcomes Leading California IP Attorney with Broad Range of Technological and Litigation Expertise

  Jo Dale Carothers Joins as Shareholder, Strengthening Firm’s IP Capabilities and Extending Reach into San Diego SAN DIEGO (January 14, 2015) – Weintraub Tobin, one of California’s leading full service law firms,

Read More

Football, Beer, and Court Fights

When it comes to football, I am a huge fan and love watching games on TV.  However, I do not typically pay attention to the commercials during games, with one major exception:  the Super Bowl. 

Read More

No Judicial Estoppel in the Case of the On-Again, Off-Again Patent Inventor

The case of Egenera, Inc. v. Cisco Systems, Inc. raised the question of whether inventors named on a patent can be repeatedly changed as litigation strategy changes. Because of judicial estoppel,

Read More

The PTAB Requires Settlement and Collateral Agreements to Terminate IPRs

Following the America Invents Act, a petition for inter partes review (“IPR”) has become a common method for challenging the validity of a patent before the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office (“USPTO”). 

Read More

Federal Circuit: Sequenom’s Fetal DNA Claims Are Patent Eligible

An unborn baby’s DNA (“fetal DNA”) can be used to determine the sex of the baby as well as to test for conditions such as Down’s syndrome.  In the past, procedures to get samples of fetal DNA for testing involved sticking a large needle through the abdominal wall and into the uterus of the mother to obtain amniotic fluid,

Read More

Google’s Servers Do Not Constitute a Regular and Established Place of Business for Patent Venue

It has become commonplace for companies such as Google to use local servers to provide faster service to customers.  This practice has raised the question as to whether those local servers constitute “a regular and established place of business” for the purposes of establishing venue in patent infringement suits in the districts where the servers are located.

Read More

Is a Copyright Notice Sufficient Evidence a Textbook Is a Printed Publication for Institution of Inter Partes Review?

To use a textbook or other reference to challenge the validity of a patent in a petition for inter partes review (“IPR”), the textbook must have been “publicly accessible” prior to the date of the challenged patent to qualify as a printed publication.

Read More

Online Gaming Case Addresses Trigger for One-Year IPR Filing Deadline

  When sued for patent infringement, a defendant can still petition for inter partes review (“IPR”) of the asserted patent at the United States Patent and Trademark Office (“USPTO”) if the petition is filed within one year of service of the complaint. 

Read More

PTAB Invalidates Data Privacy Risk Assessment Patent

Many resources are being devoted to preventing data breaches and protecting privacy.  In fact, patents have issued on various approaches.  But are those approaches really patentable?   In a recent challenge to OneTrust’s patent,

Read More

Federal Circuit Invalidates Garage Door Opener Patent Because It Is an Abstract Idea

Have you ever driven away from your home and then had that irritating doubt in your mind as to whether you remembered to close your garage door? I know I have.

Read More

Rule Change Requires U.S. Counsel for Foreign-Domiciled Trademark Applicants

The United States Patent and Trademark Office (the “USPTO”) explains that “A trademark is a brand name. A trademark or service mark includes any word, name, symbol, device, or any combination,

Read More

Some at the PTAB Think Textbooks Are Not Printed Publications

Shockingly, some at the Patent Trial and Appeal Board (“PTAB”) think textbook publishers who include dated copyright notices don’t actually publish the textbooks that year! Further, would you have imagined an argument that textbooks aren’t printed publications?

Read More

Are Patent Applicants Required to Pay USTPO Attorneys’ Salaries, Win or Lose?

The United States Supreme Court granted a writ of certiorari in Iancu v. NantKwest to determine whether a patent applicant, win or lose, must pay the salaries of the United States Patent and Trademark Office’s (“USPTO”) in-house attorneys in district court actions challenging the rejection of patent claims by USPTO patent examiners.

Read More

Can Secret Sales Prohibit Patenting Your Invention?

Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for patent in the United States.”  This limitation on patentability is often referred to as the “on-sale” bar because it prohibits,

Read More

Federal Circuit Narrows Reach of Obviousness-Type Double Patenting

Non-statutory, or obviousness-type, double patenting (“ODP”) is a judicially created doctrine that prohibits an inventor from effectively extending the monopoly on a patented invention by applying for a later patent with claims that are not “patentably distinct” from the claims in the earlier patent. 

Read More

IP Challenges Again Take the Stage at the U.S. Supreme Court

Intellectual property disputes will again take their place on stage at the U.S. Supreme Court this term when the court addresses at least two IP questions.  1.  Can the government challenge patents under the America Invents Act (“AIA”)? 

Read More

The Supreme Court: Cases to Watch and Missed Opportunities

In recent years, the U.S. Supreme Court has considered a number of intellectual property and related cases, but many issues remain unresolved.  Therefore, it is important to look both at the cases currently before the U.S.

Read More

Patent Litigation Venues: Is a Computer Server Room Really a Place of Business?

The U.S. Supreme Court’s in TC Heartland v. Kraft Food, and subsequently the Court of Appeals for the Federal Circuit in In re Cray Inc., addressed where patent litigation can be filed under the patent venue statute,

Read More

Recovery of Lost Foreign Profits for Infringement of a U.S. Patent

While a U.S. patent provides the patent owner with a monopoly to prevent others from “making, using, offering for sale, or selling the invention throughout the United States,” there are significant limits to the extraterritorial application of U.S.

Read More

New ITC Rules for Patent Infringement Cases: Adding Fuel to the Ultimate Rocket Docket

The United States International Trade Commission (“ITC”) is a Federal agency that deals with matters involving trade. Among its many responsibilities, the ITC investigates a variety of issues related to trade including investigating and adjudicating cases involving imported products that allegedly infringe intellectual property rights.

Read More

USPTO Proposes Change in Claim Construction Standard for PTAB Proceedings Under the AIA

Currently, the standard for claim construction is different in AIA reviews before the United States Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB) than in proceedings in federal district courts and the International Trade Commission (“ITC”).

Read More

Surviving Alice Challenges to Patent Claims

The Court of Appeals for the Federal Circuit just highlighted another approach plaintiffs can use to overcome early challenges to the validity of patent claims under 35 U.S.C. §101.   What is that approach? 

Read More

USPTO Finalizes Rule for Privileged Communications in Trials Before the PTAB

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews,

Read More

Federal Circuit Clarifies Venue Requirements for Patent Cases

Until the U.S. Supreme Court’s May 22, 2017 ruling in TC Heartland v. Kraft Foods, the Court of Appeals for the Federal Circuit and the United States district courts had interpreted the patent venue statute,

Read More

Offensive Trademarks Are Protected Free Speech Under the First Amendment

Simon Tam is the lead singer of the rock group call “The Slants’, which is composed of Asian-Americans.  Tam applied for federal trademark registration of the band’s name.  While the term “slants” is a derogatory term for persons of Asian descent,

Read More

Did the Supreme Court Just Close the Door on Eastern District of Texas Patent Plaintiffs?

For over 25 years, the Court of Appeals for the Federal Circuit and the United States district courts have interpreted the patent venue statute 28 U.S.C. §1400(b) to allow plaintiffs to bring patent infringement cases against a corporation in any district court where there is personal jurisdiction over that corporate defendant. 

Read More

Are the Tides Turning for Motions to Amend Claims in IPR Proceedings?

The Patent Trial and Appeal Board (“PTAB”) has rarely allowed patent owners to replace or modify claims during inter partes review (“IPR”), covered business method review, or post-grant review.  In fact,

Read More

One Is Not Enough for Patent Infringement Under 35 U.S.C. §271(f)(1)

In Life Technologies v. Promega Corporation, the U.S. Supreme Court addressed whether supplying a single component from the United States of a multicomponent invention assembled abroad constitutes patent infringement under 35 U.S.C.

Read More

Federal Circuit Requires Standing to Appeal PTAB’s Final Decisions

Although arguably foreshadowed, some may be surprised to learn that a party with the right to challenge the validity of a patent at the United States Patent and Trademark Office (“USPTO”) may not have the right to appeal an unfavorable decision. 

Read More

Two Key Things You Need to Know About the 2016 Federal Rule Changes

On December 1, 2016, amendments to the Federal Rules of Civil Procedure (“FRCP”) and Federal Rules of Appellate Procedure (FRAP) took effect.  While at first glance, the changes may not seem dramatic,

Read More

Can You Appeal the PTAB’s Decision to Institute Review of Patent Claims on Grounds Not Raised in an IPR, PGR, or CBM Petition?

The America Invents Act provided several procedures for challenging the validity of patent claims, including inter partes review (“IPR”), post-grant review (“PGR”) and covered business method patent challenges (“CBM”).  An IPR,

Read More

Is the Technology for Self-Driving Cars Patent-Eligible?

It sounds like a silly question, doesn’t it?  After all, self-driving cars represent innovative progress in technology, and patents are intended “to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”  U.S.

Read More

Wearable Technology Raises Concerns Regarding IP, Data Privacy and Data Security

When fashion fuses with high tech, we see our friends show up with trendy wearables, such as smart watches, fitness bands, and even high-tech, designer purses.  But, trendiness aside, wearables raise numerous questions for designers,

Read More

The Supreme Court Rules the PTAB and District Courts Can Continue to Apply Different Standards for Interpreting Patent Claims

Patent litigators and prosecutors have been waiting to hear whether the U.S. Supreme Court would require the United States Patent and Trademark Office (“USPTO”) to apply the same claim construction standard as the district courts. 

Read More

New Federal Trade Secret Law Takes Effect!

So what is a trade secret?  Generally, a trade secret is information that the owner has taken reasonable measures to keep secret, derives independent economic value from not being generally known,

Read More

Are Pins, Posts, Tweets and Likes Appropriate for Use in Selecting Jurors?

When you hear the name of someone you can’t place or don’t know much about, what do you do?  Chances are, you “Google” them.  Well that is what attorneys are doing to learn more about prospective jurors too! 

Read More

The Federal Circuit Finds Foreign Sales Do Not Exhaust Patent Rights

In Lexmark International, Inc. v. Impression Products, Inc., No. 14-1617 (Fed. Cir. 2016), the U.S. Court of Appeals for the Federal Circuit decided en banc that a U.S. patent owner’s “first sale” of items in a foreign country does not exhaust the patent owner’s right to sue for patent infringement when those items are later imported into the U.S.

Read More