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,…

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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…

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28

Aug 2020

Will U.S. District Courts Give Up Trying to Understand Section 101 Patent Eligibility?

By Peter Schechter 繁體中文 A United States District Judge recently denied an accused infringer’s motion to dismiss the complaint based on the infringer’s defense of patent subject matter ineligibility under 35 U.S.C. Section 101.  While there’s nothing unusual about that, Judge Nielson certified the court’s order upholding patent validity for immediate appeal to the Court of Appeals for the Federal Circuit, and wrote: “if this…

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28

Jul 2020

The Dwindling Usefulness of AIA Post Grant Review

By Peter Schechter 繁體中文 Recent changes to procedures of the Patent Trial and Appeal Board of the USPTO, coupled with decisions of both the United States Supreme Court and the Court of Appeals for the Federal Circuit, have diminished both the usefulness and desirability of challenging patent validity in a Post Grant Review (PGR) proceeding.  PGR’s usefulness has dwindled due to: (1) increased legal fees,…

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01

Jul 2020

Personal Jurisdiction Uncertain Based on Stream of Commerce: Part I

By Suzanne Lecocke 繁體中文 Standards to establish specific jurisdiction over a non-resident or foreign defendant have been around for decades.  Yet today, what tests may be applied to support those standards are uncertain.  How should a court determine whether a defendant’s activities in or related to the forum are sufficiently related to the plaintiff’s claim to permit the exercise of specific jurisdiction?  The answer to…

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27

May 2020

U.S. Supreme Court 2020 Update – What’s Still Undecided?

By Peter Schechter 繁體中文 So far in 2020, the U.S Supreme Court has decided that states cannot be sued for copyright infringement,[1] that PTAB IPR institution decisions regarding time bar issues are not appealable,[2] that the published version of Georgia state law code along with its annotations cannot be protected by copyright,[3] and that proof of “willful” infringement is not a statutory prerequisite to a…

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27

Apr 2020

Lay Witness Opinion Testimony on Ultimate Question of Obviousness Is Inadmissible at Trial

By Payal Majumdar, Ph.D., and Peter Schechter 简体中文 In HVLPO2, LLC v. Oxygen Frog, LLC,[1] the U.S. Court of Appeals for the Federal Circuit (“CAFC”) held that a trial court abused its discretion by admitting lay (i.e., non-expert) witness opinion testimony regarding the ultimate question of obviousness during a jury trial.  Such lay witness opinion testimony is unduly prejudicial and circumvents extensive discovery rules and…

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24

Mar 2020

Patent Venue Statute Requires Presence of Defendant’s Employee or Agent in Judicial District

By Peter Schechter 繁體中文 The US Court of Appeals for the Federal Circuit (CAFC) has ruled that a company might have a place of business in a judicial district for patent infringement litigation venue purposes even when it does not have any “place” in the district that has any characteristics of real property or a leasehold interest.  However, the Court also held that the company…

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24

Mar 2020

CAFC Says “Use IPR In Time Or Lose It”

By Peter Schechter 繁體中文 The US Court of Appeals for the Federal Circuit (CAFC) ended the USPTO’s procedure allowing a petitioner in an instituted inter partes review (IPR) to file another otherwise time-barred IPR petition in the Patent Trial and Appeal Board (PTAB) and to then have that later-filed petition, including new challenges to additional patent claims on different grounds than were previously raised in…

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24

Mar 2020

Impact of COVID-19 (novel coronavirus) Pandemic on USPTO Operations

By Peter Schechter 繁體中文 The United States Patent and Trademark Office (USPTO) considers the effects of coronavirus to be an “extraordinary situation” within the meaning of 37 CFR 1.183 and 37 CFR 2.146 for affected patent and trademark applicants, patentees, reexamination parties, and trademark owners. Therefore, the USPTO is waiving petition fees in certain situations for customers impacted by the coronavirus. However, the USPTO cannot…

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28

Feb 2020

USPTO No Longer Accepting Requests to Participate in the IP5 PCT Collaborative Search and Examination Pilot Program

By Peter Schechter On January 3, 2020, the United States Patent and Trademark Office (USPTO) announced that it has reached the total number of applications that can be accepted for the IP5 Offices’ Patent Cooperation Treaty (PCT) Collaborative Search and Examination (CS&E) pilot program.  Each IP5 Office has set a target of accepting 100 PCT applications over the course of the two-year pilot program, and…

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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…

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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…

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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. …

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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….

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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…

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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…

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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…

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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…

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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…

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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,…

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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…

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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…

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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…

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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,…

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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…

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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…

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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…

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