Search Results for: Peter Schechter


23

Aug 2016

Partner Peter Schechter Quoted in Law360 on Texas Roils Recently Stilled Waters of Patent Agent Privilege

Partner Peter Schechter was quoted in the Law360 article “Texas Roils Recently Stilled Waters of Patent Agent Privilege.” Texas appellate ruling that an inventor’s emails with a nonlawyer patent agent aren’t privileged is causing consternation for patent lawyers who had hoped a Federal Circuit decision in March recognizing the privilege would be the final word on the issue and maintain continuity among different venues. The ruling,…

Read More


14

Jun 2016

Peter Schechter Quoted in Law360 Article on Patent Damages Ruling

Partner Peter Schechter was quoted in the Law360 article “Attorneys React to High Court’s Patent Damages Ruling.” The U.S. Supreme Court decided on Monday, June 13, 2016 to discard the Federal Circuit’s strict test for awarding enhanced damages in patent cases, finding that the circuit’s high bar for patent owners was not justified under the Patent Act.  In the article, attorney’s tell Law360 why the decision is…

Read More


30

Oct 2014

Peter Schechter Elected Vice Chair of AIPPI-US Division of AIPLA

HOUSTON, Oct. 30, 2014 /PRNewswire/ –Peter C. Schechter, who joined Osha Liang LLP as a partner in January 2014, was elected vice chair of the AIPPI-US Division of the American Intellectual Property Law Association (AIPLA), the international intellectual property law firm announced today. Mr. Schechter’s election at the AIPLA annual meeting in Washington D.C. last week came midway through his two-year appointment to the organization’s…

Read More


07

Jan 2020

In AIA Validity Challenges, Patents Are Better Prior Art Than Printed Publications

By Peter Schechter Anyone other than the Patent Owner may request cancellation as unpatentable one or more claims of a U.S. patent in an Inter Partes Review proceeding.  The America Invents Act, in 35 U.S.C. Section 311(b), provides that an IPR Petitioner may challenge patentability “only on a ground that could be raised under section [35 U.S.C Section] 102 (anticipation) or 103 (obviousness) and only…

Read More


08

Nov 2019

The Marrakesh Treaty Aims to Reduce the “Global Book Famine”

By Peter Schechter 繁體中文 The Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired, or Otherwise Print Disabled, simply known as the Marrakesh Treaty, makes the production and international transfer of specially-adapted books for people with blindness or visual impairments easier.  The purpose of the Treaty is to address and reduce a “global book famine.”  Countries that join the…

Read More


06

Sep 2019

AIA Inter Partes Review Is Not Unconstitutional to Pre-AIA Patents under the Fifth Amendment’s Takings Clause

By Peter Schechter 繁體中文 Since the Supreme Court’s decision in Oil States Energy Servs., LLC, v. Greene’s Energy Grp., LLC, 138 S. Ct. 1365 (2018), various constitutional challenges have continued to be raised by patent owners whose pre-AIA patents have been cancelled in AIA Inter Partes Review (IPR) proceedings.  The U.S. Court of Appeals for the Federal Circuit (CAFC) has finally addressed one such challenge. …

Read More


02

Apr 2019

Important e-Commerce Venue Question Left Open – For Now

By Peter Schechter and Suzanne Lecocke 日本語 简体中文 繁體中文 Companies accused of patent infringement remain in limbo after the CAFC’s decision in In re: Google LLC, in which the CAFC declined to decide whether a company’s data servers located at independent Internet Service Provider facilities in a judicial district constitute that company’s “regular and established place of business” in that venue for patent infringement venue purposes….

Read More


05

Mar 2019

To Petition or Not to Petition: The Role of Statutory Estoppel on Later Patent Challenges

By Phillip Chambers & Peter Schechter When the America Invents Act (AIA) implemented post-grant proceedings for challenging patents in the United States in 2012, petitioners faced the risk that the AIA’s estoppel provisions could preclude subsequent validity challenges and defenses after unsuccessful proceedings.  For several years now, trial courts have been analyzing and defining the scope and extent that the AIA estoppel provisions limit or…

Read More


30

Nov 2018

Inventors and Others In Privity With Them May Challenge Validity of Their Own Previously Assigned Patents in PTAB Proceedings

By Peter Schechter “Assignor estoppel prevents a party who assigns a patent to another from later challenging the validity of the assigned patent.”   This equitable doctrine has been applied by U.S. district courts and the U.S. International Trade Commission (“ITC”) for over a hundred years to protect companies from the basic unfairness that would result if inventors could challenge validity of the patents that they…

Read More


31

Aug 2018

Simple Laws (Sometimes) Have Simple Meanings

By: Peter Schechter The Court of Appeals for the Federal Circuit (CAFC), sitting en banc, has decided that the statutory phrase “served with a complaint” – which appears in a time bar provision regarding Inter Partes Review (IPR) means, quite simply: served with a complaint.  The statute is not concerned with any effect, or lack of effect, of such service of a complaint.  Nor is…

Read More


31

Aug 2018

If You Participate in Standards-Setting Orgs., Disclose Your IP Rights Early & Often, or Quit the Org.

By: Peter Schechter In 2011, Rambus was cleared of allegations of improper conduct in connection with its participation in standards-setting organizations (SSO).  There, Rambus owned patent applications relating to proposed technical standards under consideration, but there was not clear and convincing evidence that any claims of any pending applications were necessarily infringed by the proposed standards.  Rambus withdrew from the SSO and then, after it…

Read More


29

Jun 2018

USPTO’s PTAB Issues “Frequently Asked Questions” Regarding Impact of Supreme Court’s SAS Institute v. Iancu Decision, But Provides Few Truly Useful Answers

By: Peter Schechter Earlier this year, the U.S. Supreme Court ruled that the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office was required to either institute Inter Partes Review (IPR) of all challenged claims on all grounds raised, or not, in response to a petition challenging claims of a US patent on grounds of unpatentability.  The PTAB’s practice of “partial…

Read More


29

Jun 2018

Patent Damages Award May Include Foreign Lost Profits Under Certain Limited Circumstances

By: Peter Schechter A damages award under 35 U.S.C. § 284 for infringement under § 271(f)(2) may include foreign lost profits, regardless of the presumption against extraterritorial reach of federal statutes, the U.S. Supreme Court held in a 7-2 decision on June 22, 2018. WesternGeco LLC  v. Ion Geophysical Corp., ___ U.S. ___, No. 16-1011 (June 22, 2018).  The Court noted that the relevant conduct,…

Read More


30

Apr 2018

U.S. Supreme Court Validates Inter Partes Review, Eliminates PTAB’s “Partial” Institution Practice

***Please click here to be directed to the newsletter article titled, “New Guidance from the USPTO on Patent-Eligible Subject Matter”.*** By: Peter Schechter The Supreme Court issued two decisions on April 24, 2018 that significantly affect litigation strategies for both patent owners and accused infringers in the United States. In Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, the Court approved constitutionality of…

Read More


27

Oct 2017

2017 AIPPI Congress in Sydney, Australia

Osha Liang Partners Jonathan Osha and Peter Schechter attended the AIPPI 2017 World Congress from October 13-17, 2017 in Sydney, Australia, one of the world’s most beautiful and vibrant cities.  In John’s role as AIPPI’s Deputy Reporter General and Peter’s as Chair of one of the 2017 Study Questions, they actively took part in AIPPI’s comprehensive Educational Program, featuring all areas of IP law and all…

Read More


25

Oct 2017

In the Wake of Impression Products, Take a Look at Your Business Agreements

By: Suzanne Lecocke and Peter Schechter In its recent Impression Products[1] decision, the United States Supreme Court made abundantly clear that once a patent owner sells or authorizes the sale (by a licensee) of a patented product – anywhere in the world – it cannot use its patent to prevent the lawful purchaser from doing anything it pleases with that product.  This ruling has potentially…

Read More


12

Jun 2017

Upheaval in the Patent World? Potential Impact of U.S. Supreme Court Consideration of Inter Partes Review

By: Suzanne Lecocke and Peter Schechter Expected within the next twelve months are two United States Supreme Court rulings that could, once again, significantly alter litigation strategies for both a patentee and an accused infringer in the United States. On May 22, 2017, the U.S. Supreme Court granted certiorari in the case of SAS Inst. Inc. v. Lee, 2017 U.S. LEXIS 3236 (U.S. May 22,…

Read More


05

Jun 2017

U.S. Patent Rights End With The First Sale Anywhere

By: Peter Schechter From at least as early as the mid-19th century until the early 1990s, it was nearly uniformly understood that once a patented item was sold by or under the authority of the patentee, all patent rights as to the specific item sold were “exhausted.”  This exhaustion rule or “first sale doctrine” was a feature of English (and subsequently American) law since the…

Read More


29

Nov 2016

SAS Institute v. ComplementSoft LLC – Partial IPR Institution Is a Mixed Bag for Both Patent Owners and Patent Challengers

By: Tammy Dunn and Peter Schechter The Patent Trial and Appeal Board (PTAB) currently decides whether to review validity of patent claims challenged in petitions for inter partes review (IPR) on a claim-by-claim basis, often resulting in “partial institution” of the IPR trial proceedings.  While this practice has been criticized, it was most recently approved by the U.S. Court of Appeals for the Federal Circuit…

Read More


29

Sep 2016

AIPPI 2016 World Congress takes place in Milan, Italy

By: Jonathan Osha, Peter Schechter, and Francesca Giovannini The AIPPI 2016 World Congress took place last week in Milan, Italy.  More than 2000 IP professionals from around the world were in attendance.  Osha Liang’s Jonathan Osha, Peter Schechter, and Francesca Giovannini provide this report on the event. The Congress commenced on Saturday with Study Committee Meetings on IP harmonization topics in Patents, Designs, Copyright, and Security…

Read More


09

Mar 2016

Fed. Circ. Patent Agent Privilege Rule To Lower Legal Costs  

The Federal Circuit’s decision this week in the case involving Samsung Electronics Co. Ltd. ruled that some communications between patent applicants and nonlawyer patent agents are privileged gives agents far greater freedom to do their jobs and should lower the cost of patent law services.  Partner Peter Schechter was quoted in Law360 commenting on why the ruling is good for patent law firms, as well as…

Read More


05

Feb 2016

Osha Liang Helps Standard Innovation Achieve Global IP Settlement

HOUSTON, Feb. 4, 2016 /PRNewswire/ — The epic legal battle between Canada-based Standard Innovation Corp., pioneer of the innovative We-Vibe® brand of sexual wellness products, and the LELO group of companies, officially has ended, the intellectual property law firm Osha Liang LLP said today. In what became the equivalent of the Apple v. Samsung battle of the sexual wellness industry, these long-time rivals reached a global…

Read More


09

May 2018

URGENT POST-GRANT PRACTICE UPDATE

The USPTO has published a proposal today to change the way claims in unexpired patents are interpreted in AIA post-grant validity challenges (including IPR, PGR, CBMR) in the Patent Trial and Appeal Board (PTAB). Currently, claim terms are given their “broadest reasonable interpretation” consistent with the patent specification (“BRI standard”). The USPTO proposes to use the same claim interpretation approach used in U.S. federal district courts, construing…

Read More


02

Mar 2017

“Alice” Motion to Dismiss Complaint Denied in Credit Card Personalization Suit

March 2, 2017 —  A Colorado federal judge today rejected an attempt to invalidate Osha Liang client Gemalto SA’s patent on improved smart card personalization systems.  After Gemalto sued CPI Card Group for infringement last year, CPI sought to dismiss the case under 35 U.S.C. § 101 based on its argument that the Gemalto patent claimed only unpatentable abstract ideas and was therefore invalid under…

Read More


02

Jun 2015

Valeo North America Inc. Victorious at the PTAB

HOUSTON, June 2, 2015 /PRNewswire/ — In a significant victory, auto parts maker Valeo North America Inc. won a series of patent challenges related to vehicle vision and imaging sys-tem technology in the U.S. Patent and Trademark Office, the company’s law firm Osha Liang LLP said today. In a series of Final Written Decisions, the Patent Trial and Appeal Board invalidated 92 of 93 of…

Read More


29

Apr 2015

Beacon Power LLC Defeats Twin America Invents Act Validity Challenges to Patent

HOUSTON, April 29, 2015 /PRNewswire/ — Osha Liang LLP’s client Beacon Power LLC has defeated twin America Invents Act validity challenges to its U.S. Patent 8,008,804 covering the use of Flywheel Energy Storage Systems (FESS) for regulating the frequency of the electric power grid. In late 2014, Temporal Power Ltd., a competitor in the emerging market for FESS applications, filed two petitions for Inter Partes…

Read More