Posts By: Ted Baroody

SEPs, FRAND and Antitrust

Courts, patent owners, attorneys and policy makers are currently working through challenges associated with the large numbers of patents, especially in the cellular phone space and other related wireless communication, that read on portions of the industry standards necessary to implement the technology to function with products from multiple competing vendors.   Such patents are termed… Read more »

Revisions to PTAB Trial Rules

The USPTO proposed on August 20, 2015 amended rules applicable to trial practice for the three post grant proceedings known as IPR (inter partes review), PGR (post grant review) and CBM (covered business method), as well as derivation proceedings (which replaced the former interference practice).    A comment period of 60 days was set and has… Read more »

Akamai-Redux

On remand from the U.S. Supreme Court, the Federal Circuit – en banc, today held, “on the facts of this case, that liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method… Read more »

IPR’S Approaching Third Birthday

An “IPR” (a/k/a “Inter Partes Review”) is a relatively new procedure at the USPTO to challenge the validity of a U.S. Patent.  It has proven to be a very effective tool that can be used in response to litigation, and also to assist in obtaining leverage in licensing negotiations with competitors. The IPR procedure originated… Read more »

Akamai: Demise of Tort-Based Joint-Actor Infringement

The Federal Circuit on May 13, 2015 issued its long-awaited opinion in Akamai Technologies, Inc. v. Limelight Networks, Inc. on remand from the U.S. Supreme Court with respect to the scope of “divided” or “joint-actor” direct infringement under 35 U.S.C. § 271 (a).  Akamai had argued in favor of a broad “joint-tortfeasor” based definition of… Read more »

The Movement Toward a Federal Trade Secret Protection Law

With the recent attention by the U.S. Congress and the U.S. Supreme Court to patent issues, the value of the IP protected as a trade secret may not be receiving the attention it deserves.  Various studies have suggested that the value of IP protected as a “trade secret” (such as the recipe for Coke) greatly… Read more »