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Articles by Daniel Weinger
Another Implementer Hold Out Door Closes: The Death Of The Anti-Suit Injunction?
Implementers of standard essential patents (SEPs) continue to hold out in patent licensing discussions with SEP owners, including pursuing the cynical strategy of seeking anti-suit injunctions (ASIs). This failed strategy is again in the spotlight, this time roundly rejected by Judge Terrance Boyle in the Eastern District of North Carolina (EDNC). In Ericsson v.
Another Implementer Hold Out Door Closes: The Death of the Anti-Suit Injunction?
Implementers of standard essential patents (SEPs) continue to hold out in patent licensing discussions with SEP owners, including pursuing the cynical strategy of seeking anti-suit injunctions (ASIs). This failed strategy is again in the spotlight, this time roundly rejected by Judge Terrance Boyle in the Eastern District of North Carolina (EDNC). In Ericsson v.
It Takes Two To Tango: Gilstrap Frames Implementer Holdout As Bad Faith Justifying
Innovators have long insisted that licensing discussions over standard essential patents (SEP) are one sided: implementers often "hold out" in bad faith by delaying discussions for as long as possible. The theory driving this delay-to-pay strategy is that the worst thing that can happen is that an implementer will end up paying no more than the same FRAND rate it should have paid in the first instance, just later in time, all while continuing to receive the benefit of the patented technology.
It Takes Two to Tango: Gilstrap Frames Implementer Holdout as Bad Faith Justifying “Suspension” of SEP Licensing Discussions
Innovators have long insisted that licensing discussions over standard essential patents (SEP) are one sided: implementers often “hold out” in bad faith by delaying discussions for as long as possible. The theory driving this delay-to-pay strategy is that the worst thing that can happen is that an implementer will end up paying no more than the same FRAND rate it should have paid in the first instance, just later in time, all while continuing to receive the benefit of the patented technology.
Federal Circuit decision shows that quest for more patents can harm IP owners
Sufficient attention was not paid to potential obviousness-type double patenting, ultimately sinking the value of the relevant patents Register for limited access Register to receive our newsletter and gain limited access to subscriber content. Register now Subscribe to unlock unlimited access Get news, unique commentary, expert analysis and essential resources from the IAM experts. Subscribe now Already have access?
EXCLUSIVE RIGHTS: Intellectual Property — SEPs At The ITC – Are SEP Litigants And The Commission Speaking The Same
In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Jonathan Engler discuss how the US International Trade Commission (ITC) evaluates standard essential patents (SEPs) that are litigated in this forum. They also provide useful context on the perspective of the ITC as it relates to the greater trade infrastructure.
EXCLUSIVE RIGHTS: Intellectual Property — SEPs at the ITC – Are SEP Litigants and the Commission Speaking the Same “Love Language?”[PODCAST]
In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Jonathan Engler discuss how the US International Trade Commission (ITC) evaluates standard essential patents (SEPs) that are litigated in this forum. They also provide useful context on the perspective of the ITC as it relates to the greater trade infrastructure.
EXCLUSIVE RIGHTS: Intellectual Property - SEPs at the ITC - Are SEP Litigants and the Commission Speaking the Same “Love Language?”
Click here to listen to the audio. In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Jonathan Engler discuss how the US International Trade Commission (ITC) evaluates standard essential patents (SEPs) that are litigated in this forum. They also provide useful context on the perspective of the ITC as it relates to the greater trade infrastructure.
Split Decisions: Can a Complaint Serve as Knowledge of Indirect Infringement? | JD Supra
A frequent issue seen within patent litigation is whether serving a complaint satisfies the knowledge requirement for post-complaint indirect infringement. This issue affects the amount of, if any, damages a patent owner can obtain. Coupled with potential IPRs, it also complicates pre-litigation licensing strategies.
Split Decisions: Can a Complaint Serve as Knowledge of Indirect Infringement?
A frequent issue seen within patent litigation is whether serving a complaint satisfies the knowledge requirement for post-complaint indirect infringement. This issue affects the amount of, if any, damages a patent owner can obtain. Coupled with potential IPRs, it also complicates pre-litigation licensing strategies.
EXCLUSIVE RIGHTS: Intellectual Property — Bad Dog? “Bad Spaniels” at SCOTUS
In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Karen Won discuss the recent Supreme Court decision in Jack Daniels v. VIP Products addressing whether the “Bad Spaniels” dog chew toy violates the Lanham Act for trademark infringement.
EXCLUSIVE RIGHTS: Intellectual Property — Bad Dog?
In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, IP Members Daniel Weinger and Karen Won discuss the recent Supreme Court decision in Jack Daniels v. VIP Products addressing whether the "Bad Spaniels" dog chew toy violates the Lanham Act for trademark infringement.
Daniel Weinger Mintz Levin Law Firm Boston Intellectual Property Litigation Lawyer
Daniel's practice in intellectual property focuses on patent litigation, both at the International Trade Commission and the Federal District Courts. Daniel has participated in all phases of patent litigation, including active engagement in multiple evidentiary hearings at the International Trade Commission. He has done work in a variety of technology areas, including computer software, software architecture, GPS, network devices, semiconductors, converged devices, and LED lighting.
EXCLUSIVE RIGHTS: Intellectual Property — Avoiding Pitfalls: IP “Dos and Don’ts” for High-Tech Start-Ups [PODCAST}
Legal Disclaimer You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only.
EXCLUSIVE RIGHTS: Intellectual Property - Avoiding Pitfalls: IP “Dos and Don’ts” for High-Tech Start-Ups
Click here to listen to the audio. In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, Daniel Weinger, Frank Gerratana, and Greg Penoyer discuss how young technology companies can set themselves up for IP success. Whether the organization’s goal is eventual divestment, an IPO, or undetermined, having a solid IP foundation will set a young company on the right track. Addressing these issues now will save time and money down the road.
Avoiding Pitfalls: IP “Dos and Don’ts” for High-Tech Start Ups | JD Supra
Starting a high-tech company is a difficult, exhausting, and thrilling endeavor – one in which founders will face seemingly endless challenges, deadlines, and make or break decisions. From a venture’s inception, founders face numerous decisions that if not thoughtfully considered can result in significant legal and financial risk. This risk must not extend to a tech company’s intellectual property, which is often the company’s crown jewels.
Apple’s Hold-out Strategy Nears End & Appears to Backfire in UK | JD Supra
The UK has again demonstrated the ongoing trend against hold-out, approving an order forcing Apple to commit to take a license on FRAND terms, to be determined by the court, or face an injunction. This ruling is the latest in a line of decisions favorable to SEP holders across Europe and the United States that seem to be retilting SEP licensing towards more balance between innovators (patent owners) and implementers (alleged infringers).
5th Circuit Confirms Avanci SEP Pool Is Safe: No Antitrust Issue With Avanci's Pool
Avanci's pool retains its 5th Circuit win, in a slightly different way, after an unusual turn of events where the panel rescinded its prior opinion and issued a new one. The new opinion affirms the district court's ruling that Continental failed to state a claim under the Sherman Act (antitrust laws) thereby dismissing the case.
5th Circuit Confirms Avanci SEP Pool is Safe: No Antitrust Issue with Avanci’s Pool
Avanci’s pool retains its 5th Circuit win, in a slightly different way, after an unusual turn of events where the panel rescinded its prior opinion and issued a new one. The new opinion affirms the district court’s ruling that Continental failed to state a claim under the Sherman Act (antitrust laws) thereby dismissing the case.
DOJ Breaking With Big Tech Approach To SEPs
On June 8, 2022, the DOJ, USPTO, and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) issued a new statement on FRAND licensing (2022 Statement) providing no set policy regarding Standards Essential Patents (SEPs), which should inure to the benefit of patent owners.
Intellectual Property Licensing Untouched in FRAND Statement
On June 8, 2022, the DOJ, USPTO, and the National Institute of Standards and Technology (NIST) (collectively, the Agencies) issued a new statement on FRAND licensing (2022 Statement) providing no set policy regarding Standards Essential Patents (SEPs), which should inure to the benefit of patent owners.
Determining Entity Status Before the United States and Patent Trademark Office: Large, Small, or Micro?
At the time of filing any patent application with the United States and Patent Trademark Office (USPTO), patent applicants must designate their entity status. Selecting the correct entity status can significantly reduce costs, so it is important to determine the correct entity status and update the status as needed throughout a patent’s and patent application’s life.
EXCLUSIVE RIGHTS: Intellectual Property — Will The Unified Patent Court Change Everything? (Podcast) - Intellectual Property - United States
United States: EXCLUSIVE RIGHTS: Intellectual Property — Will The Unified Patent Court Change Everything? (Podcast) 25 April 2022 Mintz Your LinkedIn Connections with the authors In this episode of the EXCLUSIVE RIGHTS: Intellectual Property podcast, founding host Dan Weinger speaks with Dr. Thomas Gniadek, a seasoned EU patent and trade secrets litigator with Simmons & Simmons in Munich, Germany, about the Unified Patent Court (UPC).
EXCLUSIVE RIGHTS: Intellectual Property — Will the Unified Patent Court Change Everything? [PODCAST]
Legal Disclaimer You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only.
No Harm, No Foul, And No Standing For Would-Be SEP Implementer: 5th Circuit Changes Narrative On Patent
To print this article, all you need is to be registered or login on Mondaq.com. The Fifth Circuit recently ratified the right of holders of standard essential patents ("SEP") to choose where in the supply chain to license SEPs and dealt a blow to the "hold up" narrative advanced by some implementers. In Cont'l Auto. Sys., Inc. v.
EXCLUSIVE RIGHTS: Intellectual Property — Domestic Industry At The ITC – The Commission Has Set A Positive Trend - International Law - United States
United States: EXCLUSIVE RIGHTS: Intellectual Property — Domestic Industry At The ITC – The Commission Has Set A Positive Trend 21 February 2022 by Daniel B. Weinger and Jonathan J. Engler Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com.
EXCLUSIVE RIGHTS: Intellectual Property — Domestic Industry at the ITC – The Commission Has Set a Positive Trend [PODCAST]
Legal Disclaimer You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only.
Keep Out: Uniloc Gets Second Chance To Seal Licensing Documents
United States: Keep Out: Uniloc Gets Second Chance To Seal Licensing Documents 18 February 2022 by Daniel B. Weinger and Robert C. Sweeney Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com. Patent owners that lack sufficient resources are often required to utilize the services of an outside litigation funding source to vindicate their patent rights.
Texas AG Sues Meta, Alleging Massive Collection of Face Geometries
Thursday, February 17, 2022 Texas enacted a biometric information privacy law way back in 2001, which was amended in 2009. That was a long time ago in the context of the development of privacy laws, and even longer when it comes to biometric information privacy laws. In this rapidly changing area of law, Texas was surely ahead of its time. The law, Sec.
Keep Out: Uniloc Gets Second Chance to Seal Licensing Documents | JD Supra
Patent owners that lack sufficient resources are often required to utilize the services of an outside litigation funding source to vindicate their patent rights. Often times, these patent owners communicate with such litigation funders regarding potential litigations and licensing programs such that the litigation funder can evaluate the reasonableness of the investment.
Keep Out: Uniloc Gets Second Chance to Seal Licensing Documents
February 16, 2022 Employers Take Heed: Follow Illinois Biometric Privacy Rules or Risk... by: Adam S. Forman and Nathaniel M. Glasser Broadband Access Ohio Formed to Promote High-Speed Internet Across... by: Julianna Moyer and Sherri Warner Report: New Jersey’s Lowest-Rated Nursing Homes Receive Over $100... by: Denise Mariani 401(k) Compliance Check #2: Avoid Trouble By Depositing Employee... by: Belinda S. Morgan Keep Out: Uniloc Gets Second Chance to Seal Licensing Documents by: Daniel B.
Strengthen Software Claims Against Alice Challenges Through Coined Terms And Depicting Technical Advantages In Figures
United States: Strengthen Software Claims Against Alice Challenges Through Coined Terms And Depicting Technical Advantages In Figures 08 February 2022 by Daniel B. Weinger , Mark Hammond and Matthew Karambelas Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com.
Strengthen Software Claims Against Alice Challenges through Coined Terms and Depicting Technical Advantages in Figures | JD Supra
The Federal Circuit recently provided strategic guidance for defending software claims against Alice challenges that claims recite ineligible patent subject matter under 35 U.S.C. § 101. In Mentone Solutions LLC v. Digi International Inc., defendants alleged that representative claim 5 of U.S. Patent No. 6,952,413, directed towards allocating data channels using shifted uplink status flags in cellular mobile stations, claimed only an abstract idea. The District Court agreed and dismissed.
Strengthen Software Claims Against Alice Challenges through Coined Terms and Depicting Technical Advantages in Figures
Monday, January 31, 2022 The Federal Circuit recently provided strategic guidance for defending software claims against Alice challenges that claims recite ineligible patent subject matter under 35 U.S.C. § 101. In Mentone Solutions LLC v. Digi International Inc., defendants alleged that representative claim 5 of U.S. Patent No. 6,952,413, directed towards allocating data channels using shifted uplink status flags in cellular mobile stations, claimed only an abstract idea.
Blockchain, Cryptocurrency, And IP: What Does The Future Hold? (Podcast)
United States: Blockchain, Cryptocurrency, And IP: What Does The Future Hold? (Podcast) 08 December 2021 by Daniel B. Weinger and Frank L. Gerratana Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com.
Discretion Retained: USPTO Dodges Attack From Big Tech To Rein In Discretionary IPR Denials
United States: Discretion Retained: USPTO Dodges Attack From Big Tech To Rein In Discretionary IPR Denials 24 November 2021 by Michael J. McNamara , Daniel Weinger and Kara Grogan Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com.
Discretion Retained: USPTO Dodges Attack from Big Tech to Rein in Discretionary IPR Denials | JD Supra
The U.S. Patent and Trademark Office (USPTO) recently thwarted an attempt by big tech companies such as Apple, Cisco, Google, and Intel, to rid themselves of discretionary denials under the Fintiv factors. While these companies will almost assuredly seek other avenues to dismantle such discretionary denials, last week’s developments are a win for patent owners in the short term. On November 10, 2021, Northern District of California Judge Edward J.
Optis Puts Apple's Feet To The UK Fire: Commit To FRAND Or Be Snuffed Out
UK: Optis Puts Apple's Feet To The UK Fire: Commit To FRAND Or Be Snuffed Out 06 October 2021 by Michael T. Renaud , Daniel Weinger and James J. Thomson Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com. Recent developments indicate that the UK is a favorable jurisdiction that owners of standard essential patents ("SEP") can leverage to obtain appropriate SEP rates from what would otherwise be unwilling licensees.
Optis Puts Apple’s Feet to the UK Fire: Commit to FRAND or Be Snuffed Out | JD Supra
Recent developments indicate that the UK is a favorable jurisdiction that owners of standard essential patents (“SEP”) can leverage to obtain appropriate SEP rates from what would otherwise be unwilling licensees. Demonstrating the point, a recent order from Justice Meade of the High Court in the sprawling Pan Optis/Unwired Planet SEP dispute with Apple provides an outline to the UK’s approach to handling SEP implementers who are unwilling to commit to court-determined FRAND licenses.
Custom Servers Pin Netflix In The Eastern District Of Texas
United States: Custom Servers Pin Netflix In The Eastern District Of Texas 04 October 2021 by Daniel B. Weinger and Jessica L. Perry Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com. Patent owners searching for an appropriate venue for cases against alleged infringers may be able to point to the activity of an infringer's agents, based on a new decision from the Eastern District of Texas.
PTAB
United States: PTAB "Overlooks" Rehearing Consequences And Swings The Rehearing Door Wide Open 05 October 2021 by Daniel B. Weinger , William Meunier and Sean Casey Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com. A recent decision by a Patent Trial and Appeal Board (PTAB) panel in Canadian Solar Inc., et al v.
PTAB “Overlooks” Rehearing Consequences and Swings the Rehearing Door Wide Open
December 17, 2021 EC Denies Authorization of Titanium Dioxide (E171) as a Feed Additive... by: Lynn L. Bergeson and Carla N. Hutton Trademark Modernization Act Rules Usher in Big Changes for Brand... by: Laila S. Wolfgram FTC Signals Interest in Noncompete Clauses by: Christine Bestor Townsend and Suzanne M. Watson SEC Proposes Another Round of Money Market Reforms by: Jon-Luc Dupuy Los Angeles Jury Hands $155 Million Holiday Gift to Fired Insurance... by: Anthony J Oncidi and Philippe A.
Custom Servers Pin Netflix In the Eastern District of Texas
September 30, 2021 Finally Final: The Tipped Employee Rule by: Stephanie C. Gaston and Anne R. Yuengert Groundtruth: All of Industry—Corporate Approaches to Advancing... by: Roy D. Prather, III Cal/OSHA to California Employers: Get It Right or Pay the Price by: Michael T. Taylor and Adam Roseman Reminder: Connecticut Employment Laws Effective October 1, 2021 by: Jean E. Tomasco and Kayla N. West Massachusetts COVID-19 Emergency Paid Sick Leave Extended to April 1...
EXCLUSIVE RIGHTS: Intellectual Property — Blockchain, Cryptocurrency, And IP: What Does The Future Hold? - Technology - United States
United States: EXCLUSIVE RIGHTS: Intellectual Property — Blockchain, Cryptocurrency, And IP: What Does The Future Hold? 27 September 2021 by Daniel B. Weinger and Frank L. Gerratana Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com.
EXCLUSIVE RIGHTS: Intellectual Property — Blockchain, Cryptocurrency, And IP: What Does The Future Hold? (Podcast) - Technology - United States
United States: EXCLUSIVE RIGHTS: Intellectual Property — Blockchain, Cryptocurrency, And IP: What Does The Future Hold? (Podcast) 25 September 2021 by Daniel B. Weinger and Frank L. Gerratana Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com.
EXCLUSIVE RIGHTS: Intellectual Property — Blockchain, Cryptocurrency, and IP: What Does the Future Hold? [PODCAST]
Legal Disclaimer You are responsible for reading, understanding and agreeing to the National Law Review's (NLR’s) and the National Law Forum LLC's Terms of Use and Privacy Policy before using the National Law Review website. The National Law Review is a free to use, no-log in database of legal and business articles. The content and links on www.NatLawReview.com are intended for general information purposes only.
US Open for FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding that Ericsson’s Offers were FRAND | JD Supra
The United States FRAND jurisprudence had a recent watershed moment in a decision that is sure to reverberate through the standard essential patent (SEP) world, and specifically SEP litigation in the United States. Earlier this week, a Fifth Circuit panel affirmed a jury verdict that found licensing offers made by Ericsson to HTC for Ericsson’s 4G SEPs complied with Ericsson’s FRAND obligations, the first jury verdict of its kind in the United States.
US Open For FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding That Ericsson's Offers Were FRAND
United States: US Open For FRAND Business: The Fifth Circuit Vindicates Ericsson, Finding That Ericsson's Offers Were FRAND 06 September 2021 by Michael T. Renaud , Daniel Weinger and Meena Seralathan Mintz Your LinkedIn Connections with the authors To print this article, all you need is to be registered or login on Mondaq.com.
Patent Owner Tip #15 for Surviving an Instituted IPR: Procedure for Motions to Amend | JD Supra
In earlier blogs, we discussed when to amend and when not to amend claims in an inter partes review (“IPR”) pursuant to 35 U.S.C. § 316(d)(1). Below are guidelines on the procedural aspects of filing a motion to amend claims. Motions to amend must meet the statutory and regulatory requirements set forth in 35 U.S.C. § 316(d) and 37 C.F.R. § 42.121. Pursuant to these requirements, a motion to amend may cancel any challenged patent claim and propose a reasonable number of substitute claims.
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