Law.com Subscribers SAVE 30%

Call 855-808-4530 or email [email protected] to receive your discount on a new subscription.

The Intellectual Property StrategistColumns & DepartmentsIntellectual PropertyLitigationPatent Litigation

IP News

By Howard Shire and Adam Fischer

 

Federal Circuit: IPR Petitioner Always Retains Burden of Establishing Timeliness

On September 7, the Federal Circuit made clear that an IPR petitioner always retains the burden of establishing the timeliness of its petition, and that the burden never formally shifts to the patent holder; not even to identify a real party in interest. More specifically, in Worlds Inc. v. Bungie, Inc., Nos. 2017-1481, 2017-1546 & 2017-1583 (Fed. Cir. Sept. 7, 2018), slip op. Chief Judge Prost reiterated that an IPR petitioner “bears the ultimate burden of persuasion to show that its petitions are not time-barred” because of a complaint previously served on a real party in interest. Slip. Op. at 8-9 (“the timely filing of a petition … is a condition precedent to the Director's authority to act”). The court then outlined the procedure for analyzing that issue, rejecting any formal “presumption” in favor of the petitioner, and instead mandating that the PTO Board make all “factual determinations necessary to evaluate” the issue once a sufficient question is raised by the patent holder. Id. at 15.

Worlds grew out of a dispute related to computer-generated avatars. In 2012, Worlds filed suit against Activision Publishing, Inc. (Activision) in the District of Massachusetts, alleging that Activision infringed Worlds's avatar-related patents in certain of its video games, including Call of Duty. Id. at 2. In 2014, Worlds notified Activision that it intended to add another video game series — Destiny — as an additional accused product in the litigation. See, id. at 2-3. The Destiny games were distributed by Activision, but developed by Bungie, Inc. (Bungie), which was not a party to the district court suit.

This premium content is locked for Entertainment Law & Finance subscribers only

  • Stay current on the latest information, rulings, regulations, and trends
  • Includes practical, must-have information on copyrights, royalties, AI, and more
  • Tap into expert guidance from top entertainment lawyers and experts

For enterprise-wide or corporate acess, please contact Customer Service at [email protected] or 877-256-2473

Read These Next
The Article 8 Opt In Image

The Article 8 opt-in election adds an additional layer of complexity to the already labyrinthine rules governing perfection of security interests under the UCC. A lender that is unaware of the nuances created by the opt in (may find its security interest vulnerable to being primed by another party that has taken steps to perfect in a superior manner under the circumstances.

Beach Boys Songs Written Decades Ago Triggered Current Quarrel With Lawyers Image

There's current litigation in the ongoing Beach Boys litigation saga. A lawsuit filed in 2019 against Nevada residents Mike Love and his wife Jacquelyne in the U.S. District Court for the District of Nevada that alleges inaccurate payment by the Loves under the retainer agreement and seeks $84.5 million in damages.

Major Differences In UK, U.S. Copyright Laws Image

This article highlights how copyright law in the United Kingdom differs from U.S. copyright law, and points out differences that may be crucial to entertainment and media businesses familiar with U.S law that are interested in operating in the United Kingdom or under UK law. The article also briefly addresses contrasts in UK and U.S. trademark law.

Strategy vs. Tactics: Two Sides of a Difficult Coin Image

With each successive large-scale cyber attack, it is slowly becoming clear that ransomware attacks are targeting the critical infrastructure of the most powerful country on the planet. Understanding the strategy, and tactics of our opponents, as well as the strategy and the tactics we implement as a response are vital to victory.

Transfer Tax Implications on Real Property Leases Image

The real property transfer tax does not apply to all leases, and understanding the tax rules of the applicable jurisdiction can allow parties to plan ahead to avoid unnecessary tax liability.