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.”

Erise IP is pleased to announce partners Adam Seitz and Marshall Honeyman have been included in the 26^th edition of “The Best Lawyers in America” – a directory produced by Best Lawyers.

Both Seitz and Honeyman were listed among the best attorneys in Overland Park, Kansas for “Litigation – Intellectual Property.” It marks the fifth consecutive year of inclusion for Seitz and the fourth straight for Honeyman.

Attorneys are selected through a survey process in which attorneys cast more than 5.5 million votes on the skills of their peers.

Led by partners Eric Buresh and Jason Mudd and associate Chris Schmidt, Erise IP is pleased to announce the Patent Trial and Appeal Board has instituted a trial for all challenged claims in an inter partes review filed on behalf of Unified Patents against GE Video Compression, LLC (GEVC) – a General Electric company.

The patent in question – the ‘891 patent – relates to high-efficiency video coding (HVEC), which is also known as H.265. This video codec is an extension of H.264 (MPEG-4, which is used on Blu-ray discs) and can compress video files to half the size.

The ‘891 patent and its corresponding extended patent family is one of the largest families known to be owned by GEVC – was originally assigned to Fraunhofer-Gesellschaft and was transferred to GEVC in 2015.

Erise IP is pleased to announce partner Marshall Honeyman will once again speak at FABTECH on patent rights in metal forming on November 13, in Chicago.

Patents are becoming a bigger part in the metal processing world. Honeyman’s presentation will focus on how metal manufacturers can benefit by establishing internal practices, which help companies identify patentable systems and processes, as well as avoiding infringement of the patents of others. In addition, he will discuss how to deal with patent issues using industry related hypotheticals as teaching points and how metal manufactures can establish clear ownership of their intellectual property.

Held November 11-14, 2019, FABTECH is North America’s largest metal forming, fabricating, welding and finishing event.

Erise IP is pleased to announce the Patent Trial and Appeal Board has instituted a trial for all challenged claims in an inter partes review filed on behalf of Unified Patents against a non-practicing entity.

Led by partners Jason Mudd and Eric Buresh and associate Michelle Callaghan, Erise IP filed the IPR on a patent that is “directed to a recommendation engine that generates a user profile based on a user’s interests and suggests content based on similar user profiles.”

What’s more is that the PTAB denied institution the day prior of another IPR petition filed against the same patent by a major music business.

Erise IP associate Hunter Horton recently authored an article for Law360 where he provides four things to consider when drafting a successful inter partes review.

 Horton writes, “Some well-known and abundantly discussed hurdles derive from Sections 314(a), 315(b) and 325(d) of the Patent Act.”

In his article, he discusses the One-Year Time Bar, Discretionary Denial, and the Particularity Requirement for both Self-Termed Definitions and Catch-All grounds, all through the lens of how recent cases have shaped the way IPRs are approached.