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Matthew Galica is a Technology Specialist and is based in our Boston office. His work is focused on enterprise-level data management and software development. Matthew has worked with clients including Fresenius Medical Care, Raytheon, Bose, Jabil Circuits, and CAT Global Mining. Before joining Mintz Levin, Matthew was a technology consultant and application architect for a technology corporation in the Boston area.

The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes review (“IPR”), shifting the burden from the Patent Owner seeking the amendment to the IPR Petitioner opposing it.

Prior to the Aqua decision, if a Patent Owner sought to amend claims during an IPR, the Patent Trial and Appeals Board (the “Board”) placed the burden on the Patent Owner to prove that the proposed amended claims were patentable.  When Patent Owner Aqua attempted to amend its claims during an IPR challenge to its U.S. Patent No. 8,273,183, the Board found that Aqua had not met its burden and denied Aqua’s motion to amend.

Continue Reading AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The Petitioner

Patent Agent PrivilegeSeveral recent court decisions have shed light on the patent agent privilege, and now the U.S. Patent and Trademark Office (USPTO) is seeking to weigh-in on the issue.

As previously reported at Global IP Matters, the Federal Circuit held in March in In re Queen’s University at Kingston that communications between patent agents and their clients regarding patent prosecution matters are privileged and should be shielded from discovery in subsequent litigation regarding the patents.

Continue Reading Patent-Agent Privilege and the USPTO’s Proposed New Rule

As a patent owner involved in patent litigation, you must consider numerous factors when negotiating a settlement agreement.  An important contemplation is timing, because finalizing a settlement agreement at the wrong juncture of your legal proceedings can have devastating results.  Specifically, the recent district court ruling in Protegrity USA, Inc., et al. v. Netskope, Inc., Case No. 15-cv-02515-YGR (N.D. Cal. Sept. 13, 2016) suggests that settling during your appeal of an unfavorable district court judgment may leave you stuck with the lower court’s original ruling.

Continue Reading Think Before You Settle: Protegrity Teaches Timing is Important When Negotiating Settlement Agreements

The Patent Trial and Appeal Board recently designated as precedential its decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015)  addressing the scope of estoppel under 35 U.S.C. § 325(e). As a result, the Westlake holding that § 325(e) estoppel does not apply to patent claims that were not the subject of a final written decision on patentability under 35 U.S.C. § 328(a) is now binding on the PTAB in other post-grant proceedings.

In Westlake, the Petitioner initially petitioned for Covered Business Method (“CBM”) review of claims 1-42 of U.S. Patent No. 6,950,807. Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00008, Paper 1 (PTAB Oct. 11, 2013). The PTAB instituted CBM trial as to claims 1-9, 13, and 34-42, but denied the petition as to claims 10-12 and 14-33.

Continue Reading Westlake Services v. Credit Acceptance: PTAB’s Precedential Decision to Apply Estoppel on a Claim-by-Claim Basis