Colin J. Stalter
Subscribe to Colin J. Stalter's PostsColin J. Stalter focuses his practice on patent litigation, client counseling, and prosecution. He has experience working with large technology companies on complex intellectual property matters including strategic acquisitions, claim chart drafting, portfolio valuation, freedom to operate opinions, and inter partes review. Colin holds a BS in systems engineering and design, and has particular experience in the consumer electronics, telecommunications, and content delivery industries. Read Colin Stalter's full bio.
Hit the Brakes: Experimental Use, Enhanced Damages Determinations Require Redo
By Colin J. Stalter on May 12, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit reversed and remanded a district court decision regarding experimental use under 35 U.S.C. § 102(b) and the application of enhanced damages based on an allegedly flawed noninfringement and invalidity opinion. Sunoco Partners Mktg. & Terminals L.P. v. U.S. Venture, Inc., Case Nos. 20-1640; -1641. (Fed. Cir....
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Not a Bullseye: Defendant Must Rebut Presumption That Claims Lacking “Means” Language Don’t Fall Under § 112 ¶ 6
By Colin J. Stalter on Mar 31, 2022
Posted In Patents
Reversing a district court finding of indefiniteness under 35 U.S.C. § 112 ¶ 6, the US Court of Appeals for the Federal Circuit found that the district court erred by ignoring unrebutted evidence that the challenged claim terms would have been understood to connote sufficiently definite structure to avoid means-plus-function construction. Dyfan, LLC v. Target...
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Dude, Where’s My Venue? Texas Car Dealerships Aren’t Distributor Agents
By Colin J. Stalter on Mar 17, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated a district court’s denial of motions made by two car distributors to transfer cases out of the Western District of Texas for improper venue, finding that the patent owner failed to establish that franchised car dealerships in the judicial district were agents of the manufacturers...
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California, I’m Coming Home: Transfer to Venue Where Products Were Designed Is Appropriate
By Colin J. Stalter on Mar 10, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit denied a patent owner’s petition for writ of mandamus, finding that the district court properly transferred a case from the Eastern District of Virginia to the Northern District of California because the center of the alleged infringing activities occurred in California. In re: SunStone Information Defense,...
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Federal Circuit Issues Errata: IPR Estoppel Applies Only to Challenged Claims
By Colin J. Stalter on Mar 3, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit issued an errata to its opinion in California Institute of Technology v. Broadcom Limited, clarifying that inter partes review (IPR) estoppel under 35 USC § 315(e) does not apply to unasserted claims. California Institute of Technology v. Broadcom Limited, Case Nos. 20-2222; 21-1527 (Fed. Cir. Feb....
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Too Much to Say? Word Limits Don’t Prevent Estoppel
By Colin J. Stalter on Feb 24, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit found that the Patent Trial & Appeal Board (Board) did not err in finding that a petitioner was estopped from maintaining a third inter partes review (IPR) of a patent claim after a final determination of two other IPRs challenging the same claim on different grounds....
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2022 IP Outlook Report: The Developments Shaping Patent Law
By Amol Parikh, Dr. Henrik Holzapfel, Thomas DaMario, Tim Dunker, Dr. Maximilian Kiemle, LLM, Colin J. Stalter and Jiaxiao Zhang on Feb 17, 2022
Posted In Patents
Key Takeaways and Outlook for 2022 Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is expected to be another busy year in the world of patent litigation. We fully expect persistence in these spaces: Patents/SEP FRAND Licensing Venue Developments Subject Matter...
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Federal Circuit Tosses Shaw: IPR Estoppel Applies to All Grounds That Reasonably Could Have Been Raised
By Colin J. Stalter on Feb 17, 2022
Posted In Patents
March 2022 Update: The Federal Circuit has issued an errata to this decision. Read about it here. Addressing inter partes review (IPR) estoppel after the Supreme Court of the United States’ 2018 decision in SAS Institute, Inc. v. Iancu, the US Court of Appeals for the Federal Circuit overruled its decision in Shaw Industries Group...
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Federal Circuit Reverses Judge Stark Decision, Finds Computer Network Patent Eligible
By Colin J. Stalter on Dec 9, 2021
Posted In Patents
The US Court of Appeals for the Federal Circuit concluded that a representative claim was directed to a patent-eligible improvement to computer functionality, and therefore reversed a decision authored by Judge Leonard P. Stark as a sitting judge in the US District Court for the District of Delaware. Mentone Solutions LLC v. Digi International Inc.,...
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Design Patent Prior Art Must Be From Same or Analogous Field as Claimed Article of Manufacture
By Colin J. Stalter on Oct 14, 2021
Posted In Patents
Finding that the Patent Trial & Appeal Board (Board) applied an erroneous interpretation of claim scope, the US Court of Appeals for the Federal Circuit reversed a Board decision upholding an examiner’s rejection of a lip implant design patent as anticipated by a non-analogous art tool. In re: SurgiSil, Case No. 20-1940 (Fed. Cir. Oct....
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