Intellectual Property Civil Procedure Administrative Agency

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Split Federal Circuit Upholds Constitutionality of Single PTAB Panels Rendering Both Institution & Final Written Decisions

On January 13, 2016, the Federal Circuit affirmed the decision of the PTAB in Ethicon Endo-Surgery, Inc. v. Covidien LP, IPR2013-00209, that all of the claims of U.S. Patent 8,317,070 are obvious. While the obviousness...more

Just Because You Can, Doesn’t Mean You Should

In Ethicon Endo-Surgery, Inc. v. Covidien LP, [2014-1771](January 13, 2016), the Federal Circuit held that the same panel of the PTAB can make the decision to institute an IPR and the final written decision, and that the PTAB...more

Will the Supreme Court Put the Brakes on the IPR Trend? Cuozzo Speed Tech., LLC v. Lee

Not so fast: the United States Supreme Court is set to review the America Invents Act’s (“AIA”) fast-track inter partes review (“IPR”) process. On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed...more

Cuozzo Speed Technologies, LLC v. Lee

The Supreme Court on Friday granted certiorari to review the Federal Circuit's decision that the U.S. Patent and Trademark's Patent Trial and Appeal Board was entitled to perform claim construction in inter partes review...more

USPTO Implementation of AIA Does Not Violate Due Process: Federal Circuit Affirms the PTAB Panel Determining Institution of an IPR...

In Ethicon Endo-Surgery, Inc. v. Covidien LP, a 2-1 panel split of the Federal Circuit held that neither the American Invents Act (“AIA”) nor the Constitution precludes the same panel of the Patent Trial & Appeal Board...more

PTAB Designates Decision in LG Electronics v. Mondis Tech IPR as Precedential

As a follow-up to our Alert yesterday, the Board also designated their decision in LG Electronics, Inc. v. Mondis Tech Ltd., IPR2015-00937, Paper 8 (PTAB September 17, 2015) as precedential, a decision explaining the one-year...more

PTAB Designates Previous Board Decision in Westlake Services v. Credit Acceptance as Precedential

On January 12, 2016, the Patent Trial and Appeal Board (PTAB) designated as precedential a previous Board decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015), clarifying...more

Top Stories of 2015: #6 to #10

After reflecting upon the events of the past twelve months, Patent Docs presents its ninth annual list of top patent stories. For 2015, we identified twenty stories that were covered on Patent Docs last year that we believe...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

Knobbe Martens Client STAR Envirotech Wins Affirmance of IPR Decision Finding Patent Valid

On December 31, 2015, the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeal Board’s decision that a STAR Envirotech patent relating to its evaporative emission testing tools is valid and not...more

Settle with All Stakeholders Before Trying to Terminate an IPR - Qualcomm Inc. v. Bandspeed, Inc.

In a case where the patent owner settled out of an IPR proceeding with the petitioners but not with a party seeking joinder, the Patent Trial and Appeal Board (PTAB or Board) instituted inter partes review of all the...more

Exclusive Ownership” Is Not Necessary for Standing in an IPR - Legend3D Inc. v. Prime Focus Creative Services Canada Inc.

Addressing the standing requirement for participating in an inter partes review (IPR), the U.S. Patent Trial and Appeal Board (PTAB or Board) held that, unlike district court, there is no “exclusive ownership” requirement for...more

Inter Partes Review Is Not for Pending Claims - Ford Motor Co. v. Signal IP, Inc.

Addressing the issue of the utility of consolidating an inter partes review (IPR) with an ex parte reexamination proceeding, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a...more

Patent Owner Should Have Left “Good Enough” Alone - Belden Inc. v. Berk-Tek LLC

Addressing issues of obviousness and procedural issues related to the use of declarations, the U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part a decision by the Patent Trial and Appeal...more

Top Patent Law Stories In 2015

I will try to keep this post as brief as possible, since I posted at length on all of the stories. There was a lot of IP action in 2015 – much involving the Fed. Cir. and Supreme Court’s resolution of cases in progress in...more

ITC Confirms a Section 337 Violation May be Based on Discontinued Accused Products

On occasion, the allegations in a patent-based a section 337 investigation will apply the asserted patent(s) against an accused product that, by the time the investigation concludes, has been discontinued. This is...more

ITC Section 337 Update – December 2015

Amendments To Federal Rules Of Civil Procedure Announced – Effective December 1, 2015, the Federal Rules of Civil Procedure (“FRCP”) have been amended with respect to pleading requirements and discovery. Notably, the FRCP do...more

Don’t Expect to Rely on Inter Partes Review Institution Decisions by the PTAB

As the number of petitions for inter partes review (IPR) increases, the desire to utilize decisions of the Patent Trial and Appeal Board in litigation has become a topic of interest in the world of patent litigations. ...more

USPTO Left Hand Doesn’t Know What the Right is Doing: An Unexpected Consequence of Recording Combined Declaration/Assignments

The America Invents Act (AIA) introduced several changes to inventor oath/declaration practice that took effect in 2012. One such change is the ability to incorporate an inventor’s required declaration statements into an...more

Federal Circuit Judges Voice Concern Over PTAB Practice of Denying AIA Petitions Based on “Redundancy”

In a recent oral argument, Federal Circuit judges criticized the USPTO practice of not instituting AIA post grant proceedings on grounds considered “redundant” of other grounds in a petition. The USPTO conceded that it uses...more

Federal Circuit: IPR Proceedings are Constitutional

In MCM Portfolio v. HP (Fed. Cir. 2015), a three-judge panel of the Federal Circuit held that the Inter Partes Review (IPR) system implemented by the U.S. Patent and Trademark Office under the America Invents Act of 2011...more

PTAB Update -- The Constitutionality Edition - MCM Portfolio LLC v. Hewlett-Packard Co. (Fed. Cir. 2015)

In a decision that likely came as no surprise to anyone, the Federal Circuit upheld the constitutionality of IPR proceedings as provided for by the America Invents Act. With an analysis of two pre-1900 Supreme Court cases...more

PTAB Decisions on Instituting CBM Review Are Based Only on the Petition and Preliminary Response - American Express Company v....

Addressing whether a petitioner seeking a covered business method (CBM) review could file a reply to the patent owner’s preliminary response, the Patent Trial and Appeal Board (PTAB or Board) answered in the negative,...more

Federal Circuit Finds IPRs Constitutional

Yesterday, in MCM Portfolio LLC v. Hewlett-Packard Company, the Federal Circuit found inter partes reviews constitutional. HP filed for inter partes review (IPR) of several of the claims of MCM’s patent. MCM argued that...more

Federal Circuit Holds Inter Partes Reviews Are Constitutional

The United States Court of Appeals for the Federal Circuit held today in MCM Portfolio LLC v. Hewlett-Packard Co. that inter partes review proceedings before the Patent Trial and Appeal Board are constitutional, rejecting MCM...more

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