Search Results for: Tammy Dunn


15

Sep 2019

Tammy Dunn Ranked “Top 50 Women in PTAB Trials List”

Congratulations to Osha Liang Attorney Tammy Dunn who was ranked among the “Top 50 Women in PTAB Trials List” according to the PTAB Bar Association. “This special publication, released by the Association’s Women’s Committee as part of a two-year long focus on women practicing before the U.S. Patent & Trademark Office’s Patent Trial & Appeal Board, recognizes female practitioners currently in private practice or at…

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28

Feb 2020

Enforcing Patents The Amazon Way

By Tammy Dunn and Lisa Margonis 繁體中文 For years, patent owners have struggled with what to do about infringers on Amazon and other online marketplaces.  The traditional answer has been to get an order from a court or other tribunal that has determined infringement and to present a copy of that order to the online marketplace.  For many, however, engaging in expensive protracted litigation in…

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10

Dec 2019

Trademark Infringement Findings in ITC Investigations Without Actual Confusion or Consumer Survey Evidence

By Tammy Dunn 繁體中文 Over the past few years, Segway, Inc., the maker of two-wheeled motorized personal vehicles (as seen in U.S. Patent No. 8,830,048) has successfully litigated against competitors that were infringing its patents. In March 2016, Segway won the rare remedy of a General Exclusion Order (GEO), issued by the International Trade Commission after an investigation concluded in findings that several companies were…

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05

Aug 2019

Iancu v. Brunetti: U.S. Supreme Court Holds the Lanham Act’s Ban on Registration of “Immoral or Scandalous” Trademarks Violates the First Amendment

By Tammy Dunn and Keelin Hargadon 繁體中文 In Iancu v. Brunetti, 588 U.S. __ (2019), the Supreme Court affirmed the Federal Circuit’s decision invalidating the statutory bar on registration for marks considered “immoral or scandalous.”  The Supreme Court’s reasoning was similar to its analysis in Matal v. Tam, 582 U.S. ___ (2017), in which the Supreme Court declared unconstitutional the Lanham Act’s ban on registering…

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01

Feb 2019

Beating the Odds in IPRs

By Tammy J. Dunn 日本語 简体中文 繁體中文 Osha Liang is pleased to announce a recent series of victories on behalf of a firm client and patent owner in three inter partes review proceedings (“IPRs”) pending before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”).  Earlier this month, the PTAB issued Final Written Decisions in all three IPRs, finding that out…

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31

May 2018

Claim Interpretation Urged by Patent Owner in District Court Infringement Litigation May Be Relied on by Petitioner in IPR Challenge

By: Tammy Dunn In Western Digital Corporation v. SPEX Technologies, Inc. (“Western Digital IPR”), the Patent Trial and Appeal Board (“PTAB”) recently allowed a petitioner to use a patent owner’s claim construction positions taken in district court infringement litigation in an IPR petition, even though the petitioner explicitly disagreed with those positions in district court. At the time the petitioner filed its IPR petition, the…

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25

Feb 2018

IPR Motions to Amend – Basic Rules & Guidelines

By: Tammy Dunn A few short years ago, the AIA created inter partes review (IPR) proceedings.  Since their creation, IPRs have become an ever-popular way in which almost anyone can challenge the validity of a patent on certain grounds on the basis of printed publications.  Unlike district court litigation, where judges and juries decide questions of patent invalidity, in IPRs technically trained administrative patent judges…

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28

Jan 2018

U.S. Federal Circuit Announces IPR Time Bar is Reviewable on Appeal

By: Tammy Dunn Approximately one year ago, Osha Liang reported in its newsletter that the United States Court of Appeals for the Federal Circuit in Wi-Fi One LLC v. Broadcom Corp., Case No. 2015-1944, agreed to review the issue of whether patent owners in inter partes review proceedings (IPRs) can appeal decisions by the United States Patent & Trademark Office’s Patent Trial and Appeal Board…

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17

Jan 2017

Federal Circuit to Review the Reviewability of the IPR Time Bar

By: Tammy Dunn Inter partes review proceedings (IPRs) have become an increasingly popular avenue for those who seek to invalidate claims in a patent.  Created by Congress through the America Invents Act, IPRs offer a more streamlined and relatively cost-effective way to invalidate patents than historically has been available in United States district court proceedings.  Unlike district court, where judges and juries make decisions regarding…

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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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23

Nov 2016

Ready For Your Next Trade Show? The TRO Trend Continues.

By: Tammy Dunn and Jeffery Langer Earlier this year Osha Liang partners Tammy Dunn and Jeffery Langer, Ph.D. wrote a Law360 Expert Analysis article (March 2016) noting an apparent developing trend in the U.S. District Court for the District of Nevada: granting temporary restraining orders against non-U.S. companies accused of patent infringement on the eve or at the beginning of trade shows where they planned to exhibit….

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29

Sep 2016

Federal Circuit set to Review PTAB’s Amendment Process

By: Tammy Dunn and Monica Katthage Historically, the Patent Trial and Appeal Board (PTAB) has issued near blanket refusals to allow amendments to claims despite the fact that the inter partes review (IPR) statute of 35 U.S.C. § 316(d) expressly allows patent owners to move to do so.  This historical difficulty in amending claims during an IPR is a source of great frustration in post-grant practice…

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07

Mar 2016

The Hottest Product at Your Next Trade Show – A TRO

Partners Tammy Dunn and Jeffery Langer, Ph.D. discuss how trade show TROs can be powerful weapons for IP rights holders and threats to be reckoned with for accused infringers, suggesting that exhibitors on both sides of a burgeoning IP dispute would be wise to have counsel explore this potential remedy. A French adaptation of the article was also published in the francophone IP revue (RFPI).  European…

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27

Apr 2020

To Institute or Not To Institute – That is the Question: Recent PTAB Precedential Decisions on § 325 Denials

By Tammy J. Dunn 繁體中文 The Patent Trial and Appeal Board recently designated two decisions as precedential and a third as informative on the issue of when the Board will and will not exercise its discretion to reject America Invents Act post-grant proceedings petitions that rely upon invalidity arguments similar to those used during the original patent prosecution.  Accordingly, precisely how the Board will exercise…

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04

Jan 2019

The PTAB’s New “Precedential Opinion Panel”

By Tammy J. Dunn 日本語 简体中文 繁體中文 After six years of experience with AIA trial proceedings, including thousands of inter partes reviews (IPRs), post-grant reviews (PGRs), and covered business method reviews (CBMs), the Patent Trial and Appeal Board (PTAB) recently revamped its standard operating procedures (SOPs) relating to how the PTAB assigns panels of Administrative Patent Judges to preside over these cases, and how the…

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30

Nov 2017

Who Says the PTAB Never Allows Amendments? The Question is: Can an Amendment Survive Appeal?

By: Tammy J. Dunn One of the most common criticisms of inter partes review (IPR) proceedings, a specialized proceeding in which third parties can challenge the validity of a patent in front of the Patent Trial and Appeal Board of the US Patent & Trademark Office (“the PTAB” or “the Board”) on certain grounds based on prior art printed publications, is that there is no…

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29

Nov 2017

New Rule Extends US Attorney-Client Privilege in Proceedings before the PTAB

By: Tammy J. Dunn A new rule will take effect on December 7, 2017.  The new rule applies to the scope of attorney-client privilege in proceedings before the PTAB.  According to the Rule: [A]ny communication between a client and a USPTO patent practitioner or a foreign jurisdiction patent practitioner that is reasonably necessary and incident to the scope of the practitioner’s authority shall receive the…

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25

Nov 2017

Why Intellectual Property Matters in Sports Technology

By: Tammy J. Dunn Imagine spending millions of dollars in research and development to develop some of the best and most innovative sports technology products available.  Imagine spending as much, if not more, on top marketing and advertising to develop a brand name synonymous with success in the industry.  Imagine that feeling of having “arrived” after years of hard work, sleepless nights, and making sacrifices…

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