Secondary considerations like commercial success don’t “mean a whole lot unless there’s some tie between the claimed invention and that success,” Doug Wilson, a patent attorney at Armond Wilson LLP, said.
What Happens at The Board Does Not Stay at The Board: How Patent Owners Can Leverage IPR Proceedings in Litigation, IP Watchdog
IPWatchDog featured Armond Wilson’s expert analysis examining how patent owners can leverage IPR proceedings in litigation.
Many depositions are still conducted in a “very archaic fashion,” said Doug Wilson, a trial attorney at Armond Wilson LLP. “I’m hopeful that in a situation like this, people will start to think about whether that makes sense anymore.”
Scenarios in which parties try to invalidate patent claims with prior art used by examiners in granting the intellectual property protection come up “all the time,” Armond Wilson LLP co-founder Michelle Armond said.
Attorneys will have to adjust to presenting their case without a full array of visual presentations and handouts that would be available in courtroom, said Armond Wilson LLP trial attorney Doug Wilson. “Over the phone your ability to communicate is very one dimensional and it is very limited,” Wilson said.
The final in-person oral hearing that happens at the end of an inter partes review “is going to be an absolute mess,” said Michelle Armond, co-founder of the intellectual property litigation firm Armond Wilson LLP…. Attorneys may have to change their strategy for telephonic proceedings [in view of the coronavirus], Armond said.
Even when an accused infringer can’t convince jurors an invention is obvious, simply making those arguments and showing them the evidence can change their perception of the technology’s value, intellectual property attorney Douglas Wilson said. “The value goes down in the jurors’ minds when they get to see how close the prior art was,” Wilson, a founding partner of Armond Wilson LLP, said.
“Standing is putting a damper on people that are preemptively going out and challenging patents,” Michelle Armond, co-founder of the intellectual property litigation firm Armond Wilson LLP, said. “If you take a shot at invalidating a patent and you lose, there is no automatic path up to the Federal Circuit right now.”
After prevailing in two trials at the Patent Office, the firm also won on appeal and successfully defended the IPR judgments at the Federal Circuit in Washington, DC.
“We’re still searching for where the line is,” said attorney Michelle Armond, who founded Armond Wilson LLP and represents clients in a broad range of intellectual property disputes. “I don’t know if that’s going to come from the Supreme Court at this point or from a legislative fix, but [patent eligibility] is an area of law that definitely needs some consistency.”