US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In 2020, the institution...more
In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional discovery under Rule...more
In a rare turn of events the Patent Trial and Appeal Board recently granted a rehearing request in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd., No. IPR2020-00208, Paper 14 (P.T.A.B. June 1, 2021), stating...more
The expert declaration provides a unique opportunity for Patent Owners to bolster their case during the discovery period of an inter partes review (“IPR”) proceeding. We previously detailed how to effectively use an expert...more
The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of standing for patent licensees who wish to contest the validity of a patent or...more
4/21/2021
/ Apple ,
Article III ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Qualcomm ,
Standing
We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing...more
The United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) was once famously referred to by the former chief judge of the Federal Circuit, the honorable Randall Rader, as a patent death squad....more
In XY, LLC v. Trans Ova Genetics, LC (Case 2019-1789, issued July 31, 2020), the Federal Circuit provided another example of a life sciences method claim avoiding patent ineligibility under the Alice framework at step one,...more
Last month, in a precedential decision, the Federal Circuit vacated-in-part and remanded the Patent Trial and Appeal Board’s (“Board”) obviousness determination regarding Alacritech’s computer networking patent because the...more
Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal...more
7/30/2020
/ En Banc Review ,
Hulu ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Printed Publications ,
Prior Art ,
Reviewability Determinations ,
Scope of the Claim ,
Section 101 ,
Section 102 ,
Section 103 ,
Statutory Interpretation ,
Substitute Claims
Last week a Federal Circuit panel in Uniloc 2017 LLC v. Hulu, LLC issued an important decision regarding inter partes review (IPR) before the Patent Trial and Appeal Board on two questions concerning contingent motions to...more
7/29/2020
/ En Banc Review ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Mootness ,
Motion to Amend ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Statutory Authority ,
USPTO
On June 11, 2020, the Patent Trial and Appeal Board (“PTAB”) designated as informative a July 26, 2019 institution decision granting post-grant review of a design patent for lacking ornamentality. In this ruling, the PTAB...more
Yesterday the United States Court of Appeals for the Federal Circuit released modifications to court procedures, indicating that all in-person oral arguments are suspended until further notice. Fed. Cir. Admin. Order No....more
Last week, the US Patent and Trademark Office (“USPTO”) released a report detailing its findings on how the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, as well as subsequent USPTO guidance on 35...more
Last week, the Patent Trial and Appeal Board (“PTAB”) designated a January 24, 2020 decision, finding objective indicia of nonobviousness, such as evidence of long-felt need and industry praise, saved a patent owner’s amended...more
Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”. In Whirlpool, the Board reversed the Examiner’s obviousness...more
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC, IPR2018-00914, held that...more
3/21/2019
/ § 315(b) ,
Administrative Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Judicial Discretion ,
Litigation Strategies ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Time-Barred Claims
Today, January 22, 2019 the United States Supreme Court unanimously affirmed the Federal Circuit and held that it remains the law under the America Invents Act (AIA) that a confidential sale to a third party can trigger the...more
1/24/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Third-Party Relationships
Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent...more
Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. In Shenzhen Silver Star Intelligent Tech. Co., Ltd. v....more
The Federal Circuit affirmed the Patent Trial and Appeal Board’s inter partes review decision declaring various claims of patent owner Thales’ U.S. Patent No. 6,474,159 (“the ‘159 patent”) nonobvious. In doing so, the Federal...more
3/6/2018
/ Appeals ,
Claim Construction ,
Evidence ,
Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Standard of Review
The Medicines Company (“MedCo”) appealed findings of no infringement made by the United District Court for the District of Delaware. Hospira cross-appealed the district court’s finding that a distribution agreement did not...more
On Monday, November 27, 2017, the Supreme Court heard oral arguments in SAS Institute v. Matal.
Issue presented -
Whether 35 U.S.C. § 318(a) requires that the Patent Trial and Appeal Board (PTAB or Board) issue a final...more
On November 21st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In view of the Aqua Products decision, the PTAB...more
In issuing its precedential decision earlier this month in Two-Way Media v. Comcast, the Federal Circuit affirmed a Delaware district court determination that four data streaming patents were directed to ineligible subject...more