After four years of litigation, Australian-based CAP-XX, Ltd. finally commenced its patent infringement trial this Monday against Maxwell Technologies, Inc. before Judge Jennifer Hall and a Delaware jury and is set to end on...more
In 2020, the Patent Trial and Appeal Board (“PTAB”) announced six factors to be used in determining whether to institute an inter partes review (“IPR”) when a fast-moving parallel district court litigation could determine the...more
In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert...more
Last week we looked at what circumstances favor amending claims in an IPR . We now turn our discussion to those circumstances when a patent owner should think twice about amending, including when significant past damages...more
On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in United States v. Arthrex, et al., striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an...more
6/25/2021
/ Administrative Patent Judges ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
SCOTUS ,
United States v Arthrex Inc
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
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
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
Last week, the Federal Circuit held computer memory system patent claims not abstract and thus patent-eligible under Section 101, reversing a lower court dismissal of the case under Rule 12(b)(6). Visual Memory LLC v. NVIDIA...more
The Supreme Court’s decision five months ago in TC Heartland v. Kraft Food Group Brands was a sea change in the way courts interpret venue for patent infringement cases. Since the Federal Circuit’s decision in VE Holding...more
8/21/2017
/ Forum Shopping ,
Limited Liability Company (LLC) ,
Motion to Dismiss ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Personal Jurisdiction ,
SCOTUS ,
Split of Authority ,
State of Incorporation ,
TC Heartland LLC v Kraft Foods ,
Venue ,
Waivers
The U.S. Supreme Court announced its ruling in TC Heartland v. Kraft Foods Group Brands LLC on May 22, 2017, a patent infringement case that has garnered national attention for its implications on venue....more
5/26/2017
/ Forum Shopping ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Personal Jurisdiction ,
Principal Place of Business ,
SCOTUS ,
State of Incorporation ,
State of Residency ,
TC Heartland LLC v Kraft Foods ,
Venue
Today, the Federal Circuit, vacated-in-part and remanded the Patent Trial and Appeal Board’s obviousness determination regarding a Securus Technologies patent directed to systems and methods for reviewing conversation data...more
4/26/2017
/ Appeals ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Remand ,
Vacated