Inter Partes Review Proceedings

News & Analysis as of

Motion to Stay Pending Inter Partes Review Denied Where Plaintiff Had Prevailed in Previous Inter Partes Review

In this patent infringement case, Plaintiff, CTP Innovations, LLC ("CTP") sued V.G. Reed and Sons, Inc. ("Reed") to stop Reed's alleged infringement of two United States patents, which pertain to systems and methods of...more

IP Buzz - Post Grant Practice - August 2014

In this issue: - IPR Spotlight Series: Strategically Using Requests for Joinder in IPR - Lessons Learned From the First Successful Motion to Amend in an Inter Partes Review - Reaching a Milestone: Filing...more

§ 325(d) Used by the Board to Deny Petitions for Inter Partes Review

We wrote last week about the Board’s willingness to come to a different conclusion than that of the original patent examiner on the adequacy of a 131 declaration. Further, we have discussed in the past how the Board has been...more

IPR Spotlight Series: Strategically Using Requests for Joinder in IPR

Inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) became available on September 16, 2012 as a post-grant review procedure to challenge the patentability of issued claims based on prior art patents and...more

131 Declaration That Was Successful in Prosecution Deemed Insufficient in Inter Partes Review

The Board proved willing to overturn a previous patent examiner’s judgment in another type of issue in Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, where, in instituting an inter partes review trial, the Board found that...more

Lessons Learned From the First Successful Motion to Amend in an Inter Partes Review

While the Leahy-Smith America Invents Act (AIA) provides a mechanism that allows amendments to patents challenged in an inter partes review, until recently, all motions to amend have failed. The final decision in...more

Personal Audio No Longer Trolling Adam Carolla

Adam Carolla has reportedly settled the lawsuit that was filed against him by Personal Audio LLC. The Agreed Motion to Dismiss Claims is available for review, but the specific terms of the settlement have not been...more

Consider this Potential Downside of Inter Partes Review: Denial of the Petition May Be Used Against You in a Concurrent District...

In many instances, it may be advantageous to challenge patent validity via an AIA trial in front of the Patent Trial and Appeal Board (PTAB). Despite all of the advantages to an AIA trial, a potential AIA trial petitioner...more

Yamanaka iPSC Patent Challenged

Dr. Shinya Yamanaka of Kyoto University shared the 2012 Nobel Prize in Physiology or Medicine with Dr. John B. Gurdon for their respective discoveries that mature, specialized cells can be reprogrammed to become immature...more

Institution Decisions for August 21, 2014

Institution Decisions - In Finisar Corporation v. Thomas Swan & Co. Ltd., IPR2014-00461, Paper 9 (August 21, 2014), the Board instituted inter partes review of claims 1-27 of U.S. Patent No. 7,664,395 (all of the...more

Institution Decisions and Dispositions for August 20, 2014

Institution Decisions - In Google Inc. v. Arendi S.A.R.L., IPR2014-00450, Paper 10 (August 20, 2014), the Board instituted inter partes review of claims 1, 7, 10, 12, 16, and 20 of U.S. Patent No. 7,921,356, but not with...more

Failure to Identify Structure of Means-Plus-Function Limitation Results in Denial of Ground

Parties have tried different strategies in addressing claim construction in inter partes review petitions. Some have relied strictly on a generic “broadest reasonable interpretation” argument; others have followed a more...more

Motion Practice In Inter Partes Review

Inter Partes Review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”) have become a leading forum for patent disputes. IPRs are designed to be a faster and less expensive alternative to district court...more

Effect On Settlement Of Post-Grant Patent Review Proceedings

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

Board Defines Role of “Common Sense” in Obviousness Arguments

Despite news reports and blog entries to the contrary, all is not doom and gloom for Patent Owners in inter partes review proceedings. In SDI Technologies, Inc. v. Bose Corporation, IPR2014-00346, the Board denied an...more

Institution Decisions on August 19, 2014

Institution Decisions - In Corning Optical Communications RF LLC v. PPC Broadband, Inc., IPR2014-00440, Paper 10 (August 19, 2014) the Board instituted inter partes review of claims 1, 8, 9, 11, 18–26, and 29 of U.S....more

Board Grants Rare Motion to Submit Supplemental Information

In general, all the evidence a party seeks to rely upon in an inter partes review must be contained in either the Petition (for Petitioner) or Patent Owner Response (for Patent Owner). 37 C.F.R. § 42.123 (b), however, allows...more

Patent Filings and Insitution Decisions on August 14, 2014

New Filings - Merial Limited filed IPR2014-01279 challenging U.S. Patent No. 8,501,799, assigned to VIRBAC....more

Patent Filings, Insitution Decisions, and Rehearings for August 13, 2014

New Filings - CaptionCall, LLC filed IPR 2014-01287 challenging U.S. Patent No. 7,660,398 assigned to Ultratec, Inc. Aruze Gaming Macau, Ltd. filed IPR2014-01288 challengnig U.S. Patent No. 7,892,088 assigned to MGT...more

Estoppel effects of post-grant patent proceedings under the AIA

By now, most patent practitioners are quite familiar with the post-grant patent proceedings (e.g., IPR, PGR, CBM) newly established by the AIA, and their key features, such as the stay and estoppel provisions. Numerous...more

Inter Partes Review Still Difficult for Patent Owners

EcoWater Systems LLC v. Culligan International Co. - In a final written decision, the Patent Trial and Appeal Board (PTAB, the Board) found several claims subject to the requestor’s petition to be unpatentable over the...more

Indemnity Agreement Does Not Equate to a “Real Party in Interest” to Create Time-Bar for Inter Partes Review

Apple v. Achates Reference Publishing - The Patent Trial and Appeal Board (PTAB, the Board) has concluded that an inter partes review of a patent is not time-barred if a petition was filed more than one year after the...more

Patent Expiry During IPR Means Phillips, not BRI, Applies

We previously discussed one Patent Owner’s attempt to avoid the “broadest reasonable interpretation” (BRI) claim construction standard by disclaiming the remainder of the patent-at-issue’s term. While some uncertainty about...more

Patent Filings, Institution Decisions and Dispositions for August 7, 2014

New Filings - Zerto, Inc. filed IPR2014-01254 challenging U.S. Patent No. 7,603,395 assigned to EMC Corporation....more

Institution Decisions for August 11, 2014

Institution Decisions - In GSI Technology, Inc. v. Cypress Semiconductor Corporation, IPR2014-00419, Paper 9 (August 11, 2014), the Board denied inter partes review of claims 1–3, 9–11, 17–20, 26–28, and 34 of U.S....more

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