Yesterday, in Ironburg Inventions Ltd. v. Valve Corp., Case No. 21-2296 (Fed. Cir. Apr. 3, 2023), the Federal Circuit held that for estoppel to apply under 35 U.S.C. § 315(e)(2), a patent holder must prove, by a preponderance...more
In one of the first decisions to address the scope of post-grant review (“PGR”) estoppel under 35 U.S.C. §325(e)(2), the Eastern District of Texas recently found that the statute means what it says. GREE, Inc. V. Supercell...more
On May 20, 2019, the PTAB exercised its discretion under 35 U.S.C. § 314 and denied one of two related petitions filed on the same day by a petitioner challenging the same patent. Comcast Cable Communications LLC v. Rovi...more
In SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that an IPR final written decision must address every challenged claim. The PTAB responded by issuing amended Institution Decisions, adding all...more
The U.S. District Court for the District of Massachusetts recently found that the scope of inter partes review estoppel was limited to only those grounds specifically instituted in an IPR proceeding, applying the standard set...more
Earlier this year, the Federal Circuit held that statements made by patentees in an inter partes review (IPR) can constitute prosecution disclaimer. Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017)....more
Kilpatrick Townsend’s John Alemanni, Allison Dobson, Matthew Holohan, and Wab Kadaba recently presented on navigating the Post-Grant landscape. Here are three key takeaways from their presentation.
The STRONG Patents Act...more
In 2012, the American Invents Act created Inter Partes review (“IPR”) and related proceedings that allowed parties to request that the Patent Office institute a trial to determine the patentability of issued claims. Over the...more