Michael A. Siem, Lynn A. Lehnert, and Kenneth A. Matuszewski of Goldberg Segalla’s Intellectual Property group explored how litigation strategy may need to adapt following the California Institute of Technology v. Broadcom Limited, et al. ruling in a recent Law360 article. Petitioners, accused infringers, and patent owners need to reassess their litigation and Patent Trial and Appeal Board (PTAB) strategies moving forward. Failure to completely understand relevant patents before filing an inter partes review (IPR) may lead to reasonable invalidity arguments being barred.
“The Caltech decision, its errata and subsequent case law applying both office estoppel and civil estoppel highlight the need for thorough due diligence and precise development of litigation strategy before deciding to enforce or invalidate certain patents,” they explained to Law360. “…Caltech errata, while clarifying the scope of IPR, highlights that accused infringers must exercise caution before filing an IPR petition. They must be mindful when choosing the specific claims to challenge, and the reasons therefore, at the PTAB.”
The Intellectual Property practice group protects the ideas, innovations, inventions, imagery, and creative compositions that propel successful business ventures and create strong brands.
Led by a highly experienced U.S. patent attorney, our intellectual property team draws from a broad range of Goldberg Segalla’s litigation and transactional practices, resulting in collective experience solving IP problems that involve a vast array of academic disciplines, cutting-edge innovations, and industry sectors. The GS IP team blends its members’ real-world work in scientific and high-tech disciplines with exceptional business acumen and deep experience handling patents, trade secrets, copyrights, trademarks, and other IP matters. The result is a tech-savvy and efficient team dedicated to helping clients develop practical business strategies that maximize the return on their investments and innovations.