G. Matthew McCloskey

G. Matthew McCloskey

McDermott Will & Emery

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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

11/29/2016 - Estoppel Inter Partes Review (IPR) Proceeding Patent Litigation Patent Trial and Appeal Board Patents

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

11/8/2016 - America Invents Act Covered Business Method Patents Covered Business Method Proceedings Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents

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

10/7/2016 - Abstract Ideas Alice Corporation America Invents Act Covered Business Method Patents Enfish v Microsoft Patent Trial and Appeal Board Patents

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

3/7/2016 - Broadest Reasonable Interpretation Standard Claim Construction Inter Partes Review (IPR) Proceeding Patent Litigation Patent Trial and Appeal Board Petition For Rehearing Prior Art

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

1/9/2016 - Burden of Proof Inter Partes Review (IPR) Proceeding Obviousness Patent Invalidity Patent Trial and Appeal Board Patents Petition For Rehearing Preponderance of the Evidence Prior Art

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

12/7/2015 - Inter Partes Review (IPR) Proceeding Intervenors Joinder Patent Trial and Appeal Board Petition For Rehearing USPTO

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

11/5/2015 - America Invents Act Clear and Convincing Evidence Evidentiary Standards Ex Partes Reexamination Obviousness Patent Infringement Patent Litigation Patents Preponderance of the Evidence Presumption of Validity Prior Art USPTO

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

10/2/2015 - America Invents Act Broadest Reasonable Interpretation Standard Claim Construction Ex Partes Reexamination Parallel Claims Patent Infringement Patent Litigation Patent Trial and Appeal Board Patents Post-Grant Review USPTO

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

9/8/2015 - Duty of Candor Good Faith Inter Partes Review (IPR) Proceeding Motion to Amend Patent Infringement Patent Litigation Patent Owner Preliminary Response Patent Prosecution Patent Trial and Appeal Board Patents Prior Art USPTO

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

8/7/2015 - Inter Partes Review (IPR) Proceeding Motion to Amend Patent Infringement Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Popular Prior Art

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

8/6/2015 - America Invents Act CLS Bank v Alice Corp Covered Business Method Proceedings First-to-File Mayo v. Prometheus Obviousness Patent Invalidity Patent Litigation Patent Trial and Appeal Board Patent-Eligible Subject Matter Patents Post-Grant Review Prior Art SCOTUS

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

7/8/2015 - Inter Partes Review (IPR) Proceeding Patent Trial and Appeal Board Patents Target

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

5/30/2015 - Inter Partes Review (IPR) Proceeding Patent Trial and Appeal Board Patents Petition For Rehearing Prior Art Proctor & Gamble Unilever

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

5/19/2015 - Airwatch America Invents Act Inter Partes Review (IPR) Proceeding Patent Litigation Patent Trial and Appeal Board Patents Real Party in Interest Software Standing

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

4/4/2015 - Inter Partes Review (IPR) Proceeding Joinder Patent Trial and Appeal Board Patents Target

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

3/11/2015 - Evidence Expert Testimony Inter Partes Review (IPR) Proceeding Patent Trial and Appeal Board Patents

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

2/19/2015 - America Invents Act Covered Business Method Proceedings Declaratory Judgments Patent Trial and Appeal Board Patents

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

1/13/2015 - AOL Inter Partes Review (IPR) Proceeding IP License Patent Trial and Appeal Board Patents Prior Art

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

12/10/2014 - Evidence Inter Partes Review (IPR) Proceeding Microsoft Patents Prior Art USPTO

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

12/4/2014 - Attorney-Client Privilege Discovery Document Productions Inter Partes Review (IPR) Proceeding Motion to Compel Patent Trial and Appeal Board Patents Real Party in Interest

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

10/20/2014 - Discovery Inter Partes Review (IPR) Proceeding Motion to Amend Patent Litigation Patent Trial and Appeal Board Patents

PTO Decision Not to Institute IPR Is Final and Not Appealable

ZOLL Lifecor Corp. v. Philips Electronics North America Corp. - Effectively reiterating a decision from earlier this year, the U.S. Court of Appeals for the Federal Circuit granted a patent owner’s motion to dismiss an...more

10/14/2014 - Appeals Inter Partes Review (IPR) Proceeding Patent Litigation Patent Trial and Appeal Board Patents Philips Electronics

PTAB Threatens Sanctions for Unauthorized E-mails

Samsung Electronics Co., Ltd., et al. v. Black Hills Media, LLC - Addressing a patent owner’s unauthorized e-mail arguing for additional discovery and the petitioner’s likewise unauthorized responsive e-mail, an...more

9/11/2014 - Discovery Email Patent Trial and Appeal Board Patents

The First Derivation Proceeding: Possession Not Enough: Need to Show Prior Conception of Claim Subject Matter

Catapult Innovations Pty Ltd v. Adidas AG - In denying institution for the first derivation petition considered on the merits, the Patent Trial and Appeal Board (the Board) found that the petition was fatally flawed in...more

9/9/2014 - Adidas Patent Applications Patent Litigation Patent Trial and Appeal Board Patents

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