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U.S. International Trade Commission

The ITC has the power to direct U.S. Customs to exclude entire classes of devices from being imported into the United States. Our Intellectual Property group, recognized by Chambers USA, Chambers Global and Chambers Asia, has successfully helped parties in dozens of ITC Section 337 investigations. In the past several years, we have represented parties in 16 different investigations. We are successful at the ITC because of our deep bench of world-class, first-chair trial lawyers experienced in the unique demands of ITC IP litigation. We have more than 125 IP lawyers, so whatever the ...

“Weight” a Minute – Upon Further Review Those Claims Are Not Indefinite

by Jordan Coyle and James Maune | August.15.2017

Commission Opinion, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, Inv. No. 337-TA-1031 (August 11, 2017) (ITC)We previously posted – “Weight” a Minute- Those Claims Are Indefinite – about Administrative Law Judge (“ALJ”) MaryJoan McNamara’s Initial Determination (“ID”), finding claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA).  The United States International Trade Commission (“ITC”) recently reversed and vacated that ID.  The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating ...

Unfair Import Proceedings & Trade Agreements

These cases have involved myriad administrative proceedings before federal agencies, NAFTA panel appeals, World Trade Organization (WTO) dispute proceedings, judicial proceedings, London Court of International Arbitration (LCIA) arbitrations and international settlement agreements.

As a closely related matter, we have pursued major arbitrations at the WTO and provided counsel on the negotiation of leading international trade agreements.

USPTO Post-Grant Proceedings

Clients turn to us when they need relentless trial lawyers skilled in picking the right prior art and the best experts, and to present the winning legal and technical points through effective writing and oral advocacy. We handle post-grant proceedings on a stand-alone basis or as part of a greater litigation strategy. We understand when and how to use post-grant proceedings as a corollary to litigation to best strengthen our clients’ claims and defenses at trial.

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

by Don Daybell and George L. Kanabe | September.05.2017

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels)The Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014), revised the standard for finding a patent indefinite under 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)).  In the wake of this decision, it was unclear whether the U.S. Patent and Trademark Office (PTO) would change its long-held standard for applying indefiniteness rejections during original patent application examination, based on Nautilus.  ...

U.S. Supreme Court

Nowhere are these characteristics more prominent than in the cases we litigate before the U.S. Supreme Court. In a recent high-profile report on the Supreme Court bar, Reuters found that a small group of 66 lawyers—out of 17,000 who petitioned the Court during nearly a decade—were more than six times as likely to have their clients’ cases heard by the Court. Reuters identified three Orrick partners as members of this “elite cadre” that “giv[es] their clients a disproportionate chance to influence the law of the land.” Our deep bench includes nearly a dozen former Supreme Court clerks. Our ...

Supreme Court to Hear Oral Argument in October on Enforceability of Employment Class Action Waivers in Arbitration Agreements

by Joseph Liburt and Timothy Del Castillo | July.28.2017

In January, we reported that the Supreme Court granted review of three conflicting Court of Appeal decisions to settle the question of whether an agreement requiring that employees resolve employment-related disputes through individual arbitration violates the National Labor Relations Act (“NLRA”). Last week, the Supreme Court set oral argument for October 2, 2017 to resolve