Erise IP partner Marshall Honeyman recently authored an article for The Fabricator’s October 2019 issue on whether metal manufacturers should pursue a patent or not.

He delves into the complexities of patent rights being lost due to public disclosures, sales, or offers for sale. In addition, he discusses who owns the patent if a product or system is the result of a collaborative effort. Maintaining the invention as a trade secret as an alternative to patenting is also discussed.

Honeyman will be presenting on patent rights in metal forming on November 13, in Chicago at FABTECH.

Erise IP is pleased to announce shareholder Jennifer Bailey was named to the inaugural Top 50 Women in PTAB Trials list by the PTAB Bar Association.

The list recognizes both private-practicing and in-house female practitioners who have appeared in the largest number of PTAB trial proceedings since 2012.

Bailey was chosen by Garmin to be lead counsel on the first inter partes review (IPR) ever filed with the U.S. Patent Office, and in the years since she has represented petitioners and patent owners on numerous IPRs with an almost 100% win rate.

Bailey will be featured in the PTAB Bar Association’s upcoming report on Women at the PTAB, which studies gender diversity at law firms and companies participating in PTAB proceedings. The list was released by the PTAB Bar Association’s Women’s Committee as part of a two-year long focus on women practicing before PTAB.

Erise IP technical advisor Adam Sandwell recently led a Learning Lunch discussion about the firm’s strategy when searching for prior art.

In his role, Sandwell conducts research and analysis for intellectual property cases and assists Erise attorneys when trying to invalidate patents on behalf of clients.

During the presentation, Sandwell discussed methods of searching for prior art, which included tools he finds helpful such as online databases, techniques for analyzing each patent, and approaches he uses if he comes to a “dead end.”

Erise IP partners Megan Redmond and Carrie Bader led X-ray tube manufacturer Richardson Electronics in obtaining a denial of a preliminary injunction.

The Kansas City Business Journal recently reported on the successful outcome writing that “Richardson doesn’t sell its products to Toshiba/Canon and that the two companies don’t directly compete. The judge also found that Toshiba/Canon maintained its sales levels and pricing, so there was no drop in sales volume for [the plaintiff].”

In his order, Judge John Robert Blakey concluded “the plaintiff failed to demonstrate that it will suffer irreparable harm before a decision can be rendered on the merits of its claims.”

Erise IP partners Adam Seitz and Paul Hart were featured in the Kansas City Business Journal for their work invalidating a number of claims in a patent owned by well known patent litigant Uniloc.

In July, the Patent Trial and Appeal Board instituted a trial for all challenged claims in an inter partes review filed by Erise IP partners Jason Mudd and Eric Buresh and associate Kelly Hughes on behalf of Unified Patents against a non practicing entity (NPE).

The NPE, as reported by Law360, requested the PTAB reconsider its decision, but the board denied that request saying, “it could find no clear error in its reasoning to institute inter partes review.”

In its decision, the PTAB wrote, “A request for rehearing is not an opportunity to provide rebuttal arguments.”

“Jason Mudd and Eric Buresh of Erise are thorough and talented counsel and we greatly enjoy working with them,” Unified Patents Chief Intellectual Property Counsel Jonathan Stroud told Law360. “This decision demonstrates that the board generally considers all of the relevant context when considering whether to institute, and is savvy to arguments that might overstate the level of overlap or obscure the timing or state of other proceedings.”

Erise IP partners Adam Seitz and Paul Hart were featured in Law360 for their work on behalf of Apple invalidating a number of claims in a patent owned by well known patent litigant Uniloc.

Erise IP partner Eric Buresh continued the firm’s trend of success for Unified Patents with another recent institution of an IPR by the United States Patent and Trademark Office.

The patent generally relates to techniques for encoding and decoding digital video data using macroblocks.

Erise argued the technique for encoding and decoding the patent owner used is obvious based on the Kalker patent, Novotny patent and Chiang patent.

The USPTO determined that Unified Patents demonstrated a reasonable likelihood of prevailing on its challenge to claims 1–4, 6–10, 12–18, and 20 over the combination of Kalker and Novotny and claims 5, 11, and 19 over the combination of Kalker, Novotny, and Chiang.

Erise IP associate Cliff Brazen kicked off Erise IP’s Learning Lunch CLE series on Aug. 12 when he discussed preliminary injunctions and strategies the firm implements.

Brazen discussed how preliminary injunctions condense a typical trial down to one to three months, the rate at which preliminary injunctions are granted as well as which pieces of the preliminary injunction the firm focuses most of its time and energy to effectively argue its case.

Erise’s Learning Lunch CLE series allows the firm’s attorneys, technical advisors and staff in Kansas City and Denver to come together once a month to discuss emerging topics that central to the firm’s practice. The next Learning Lunch will be presented by technical advisor Adam Sandwell, who will provide tips and tricks for prior art searching.

In the past month, Erise IP has secured three inter partes review trial institutions at the Patent Trial and Appeal Board on behalf of Unified Patents.

The Kansas City Business Journal reported on the firm’s recent successes as well as underscoring the firm’s position in the market as a “troll slayer.”

“The Overland Park-based law firm began representing an organization called Unified Patents in 2016,” the Business Journal wrote. “Since then, it’s been involved in 14 cases for the association, which includes members such as Adobe, Cisco, Facebook, Ford, Google, Mastercard, McAfee, Philips, Tesla and Uber.”