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.
CAFC Pulls Final Loose Thread in Nike-Adidas Patent Row
By Colin J. Stalter on Sep 22, 2022
Posted In Patents
Issuing a third and final decision, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision invalidating the last remaining claim of a Nike footwear textile patent. Nike, Inc. v. Adidas AG, Case No. 21-1903 (Fed. Cir. Sept. 1, 2022) (Prost, Chen, Stoll, JJ.) (non-precedential) Adidas filed...
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Implied Copyright License to Photographs of Artist Formerly Known as Prince
By Colin J. Stalter on Sep 15, 2022
Posted In Copyrights
The US Court of Appeals for the Eighth Circuit upheld a ruling that a marketer had an implied copyright license to distribute marketing materials containing digital copies of photographs of the late musical artist Prince. Beaulieu v. Stockwell, Case No. 21-3833 (8th Cir. Aug. 30, 2022) (Gruender, Benton, Grasz, JJ.) Allen Beaulieu was Prince’s personal...
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Prior Art Citation to Inventors’ Report Not “By Another” for § 102(e)
By Colin J. Stalter on Aug 25, 2022
Posted In America Invents Act, Patents
The US Court of Appeals for the Federal Circuit found that a prior art patent’s summarization of a report authored by the inventors of a patent challenged under inter partes review (IPR) did not constitute a disclosure “by another” under pre-America Invents Act § 102(e). LSI Corp. v. Regents of Univ. of Minnesota, Case No....
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Recapture Rule Applies to Subject Matter Surrendered to Overcome § 101 Rejection
By Colin J. Stalter on Aug 18, 2022
Posted In Patents
Affirming a Patent Trial & Appeal Board (Board) decision, the US Court of Appeals for the Federal Circuit held, for the first time, that the rule prohibiting recapture of subject matter surrendered during prosecution applies to subject matter surrendered to overcome a § 101 patent eligibility rejection. In re McDonald, Case No. 21-1697 (Fed. Cir....
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Claim Construction Error Fuels Remand
By Colin J. Stalter on Aug 4, 2022
Posted In Patents
The US Court of Appeals for the Federal Circuit vacated and remanded a district court’s noninfringement decision, finding that the district court improperly construed the asserted claims as requiring a dual-fuel system. Ethanol Boosting Sys., LLC v. Ford Motor Co., Case No. 21-1949 (Fed. Cir. July 18, 2022) (Moore, Hughes, JJ.) (Newman, J., dissenting) (non-precedential)....
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Split Federal Circuit Reverses Contempt Order, Sanctions Award in Protective Order Dispute
By Colin J. Stalter on Jul 7, 2022
Posted In Patents
A split panel of the US Court of Appeals for the Federal Circuit reversed a district court’s contempt order and sanctions award, finding that there was a fair ground of doubt regarding whether the defendant’s counsel’s disclosure to a third party under a joint defense agreement constituted a violation of a protective order (PO). Static...
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Faked It? Your Contract Won’t Make It
By Colin J. Stalter on Jun 16, 2022
Posted In Trade Secrets
The US Court of Appeals for the Seventh Circuit affirmed a district court ruling denying a defendant’s motion to enforce an arbitration clause in a software license agreement that the defendant’s employee entered into using a fake company name at the defendant’s direction. CCC Intelligent Sols. Inc. v. Tractable Inc., Case No. 19-1997 (7th Cir....
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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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