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Sovereign Immunity Can Shield State University Research Foundations in PTAB Proceedings

Addressing the application of the sovereign immunity defense under the 11th Amendment in the inter partes review (IPR) context, the Patent Trial and Appeal Board (PTAB) dismissed three IPR petitions, finding that the...more

PTAB Sanctions Successful IPR Petitioner, Awards Fees to Patent Owner

Addressing the “real parties in interest” requirement and claim construction issues in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) sanctioned the petitioner for failing to disclose a corporate...more

PTAB’s Working Definition for CBM Jurisdiction Deemed Too Broad

Addressing the standard for initiating a covered business method (CBM) review, the US Court of Appeals for the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB or Board) decision invalidating a patent, and in the...more

PTAB Uses § 315(e)(1) Estoppel to Narrow IPR Scope

In two recent final written decisions (FWDs) rendered in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board (PTAB or Board) narrowed the scope of the proceedings by terminating the proceedings with...more

For CBMs, the Name of the Game is a Financially Limited Claim

In two recently denied petitions for covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB or Board) provided further guidance on what claimed subject matter is eligible for CBM review. BMC Software,...more

Incomplete Preemption Does Not Result in Patent-Eligible Subject Matter

In a final written decision of a covered business method (CBM) patent review, the Patent Trial and Appeal Board (PTAB or Board) found the challenged claims unpatentable on multiple grounds and clarified that, for the purpose...more

PTAB: On Second Thought, Your IPR Is Instituted (AVX Corp. v. Greatbatch Ltd.)

In what could be a first, the Board granted-in-part a petitioner’s rehearing request, reversing its earlier decision not to institute an inter partes review (IPR). In reversing, the majority of the Board acknowledged that the...more

It Can Happen: PTAB Alters Final Written Decision on Rehearing - Square, Inc. v. REM Holdings 3, LLC

In a rare decision granting a petitioner’s rehearing request, the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier position in a final written decision where it found that the petitioner had not shown that...more

Citing a PTO’s Intervenor Brief, the PTAB Grants Rehearing and Clarifies Scope of Joinder - Zhongshan Broad Ocean Motor Co., Ltd....

In a decision granting a petitioner’s rehearing request and joinder motion, an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier decisions, explaining that those decisions were based on...more

Preponderance Standard Applies to Ex Parte Re-examinations - Dome Patent L.P. v. Lee

Addressing the presumption of validity in ex parte re-examinations, the U.S. Court of Appeals for the Federal Circuit reiterated that the presumption of validity does not apply to patents under reexamination in the U.S....more

Federal Circuit: PTAB’s Claim Construction Standard Is BRI, but Sometimes with an Obligation - Power Integrations v. Lee

In a decision with potentially far-reaching impact, U.S. Court of Appeals for the Federal Circuit concluded that the Board of Patent Appeals and Interferences (Board) in arriving at a claim constructions, is obligated to...more

PTAB Clarifies Requirements for Claim Amendments - MasterImage 3D, Inc. and MasterImage 3D Asia, LLC v. RealD Inc.

In an order perhaps indicating that the tide is turning for patent owners seeking to amend claims in inter partes review (IPR), an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) provided clarification as...more

A Kinder, Gentler PTAB Allows Claim Amendments - REG Synthetic Fuels LLC v. Neste Oil Oyj

In a final written decision, the Patent Trial and Appeal Board (PTAB or Board) agreed with the petitioner that the original challenged claims were unpatentable but at the same time granted the patent owner’s motion to amend,...more

PTAB Institutes Very First Post-Grant Review (PGR) - American Simmental Association v. Leachman Cattle of Colorado, LLC

Representing the first decision of its kind, the Patent Trial and Appeal Board (PTAB or Board) instituted the first post-grant review (PGR) under the American Invents Act (AIA). American Simmental Association v. Leachman...more

PTAB Issues Dissent for Requested Adverse Judgment - Target Corp. v. Destination Maternity Corp.

In a case with more twists that a Game of Thrones plot, an unexpected dissent issued from an order of the Patent Trial and Appeal Board (PTAB or Board) granting the patent owner’s requested cancelation of the challenged...more

PTAB: We Are Disinclined to Acquiesce to Your Rehearing Request - Conopco Inc. dba Unilever, v. The Procter & Gamble Company

In a decision denying rehearing of the order denying institution of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) explained the factors it considers in making institution decisions based on...more

IPR Privity Analysis Includes Post-Complaint Period - VMWare, Inc. v. Good Technology Software, Inc.

Clarifying the privity requirement for inter partes review (IPR) petitions, the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB or Board) explained that privity should be determined looking at the...more

PTAB Issues Rare Grant of Rehearing and Clarifies Scope of Joinder - Target Corp. v. Destination Maternity Corp.

In a rare decision granting a petitioner’s request for rehearing, a twice-expanded panel of the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier decisions denying institution of the inter partes review (IPR)...more

Expert Witness Testimony Normally Improper for Preliminary Response - B/E Aerospace, Inc. v. Mag Aerospace Industries, LLC

Clarifying what is impermissible “new” evidence for a Patent Owner Preliminary Response in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) ordered that the patent owner’s exhibit, in the form...more

Prior Declaratory Judgment Action Fatal to CBM Petitioner - GTNX, Inc. v. INTTRA, Inc.

In a decision bringing four instituted covered business method (CBM) review proceedings to a full stop, the Patent Trial and Appeal board (PTAB or Board) reiterated that a petitioner’s declaratory judgment action filed before...more

PTAB Issues Rare Dissent in Non-Institution Decision

AOL Inc., et al. v. Coho Licensing LLC - In a decision denying institution of an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB or Board) decided that the...more

Independent Corroboration Required To Prove Conception

Microsoft Corp. v. SurfCast, Inc. - Addressing the requirements for antedating prior art, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) ruled all claims of a challenged patent unpatentable,...more

PTAB Expands Discovery for Inter Partes Review

GEA Process Engineering, Inc. v. Steuben Foods, Inc. - In a decision that has the potential to expand the scope of permissible discovery in inter partes reviews (IPRs) as well as other post-grant procedures under the...more

PTAB Designates Seven Recent Decisions as Informative

The Patent Trial and Appeal Board (PTAB) recently designated seven decisions from inter partes review (IPR) proceedings as informative opinions: ZTE Corp. v. ContentGuard Holdings, Inc., Case No. IPR2013-00454 (PTAB, Sept....more

11/11/2014

PTAB Designates Two Recent Decisions as Informative

Garmin Int’l, Inc., et al. v. Cuozzo Speed Technologies LLC; Idle Free Systems, Inc. v. Bergstrom, Inc. - The Patent Trial and Appeal Board (Board) recently designated as “informative” two decisions earlier released...more

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