Inter Partes Review Proceedings

News & Analysis as of

Article: January 2015 ITC Litigation Update

The ITC as a Favorable Venue in Light of Increasing IPR Petitions and District Courts Propensities to Stay Pending IPR. Since its inception in September 2012, inter parties review (“IPR”) has become a powerful tool for...more

IP Newsflash - January 2015 #3

FEDERAL CIRCUIT CASES - Akin Gump Wins Summary Judgment of Non-Infringement - Akin Gump obtained a significant victory on summary judgment for HTC and AT&T in a patent infringement case against Adaptix, Inc., an...more

Patent Owner: Preponderance of Evidence Standard Can Never Be Met Without Expert Testimony

In IPR2013-00357, Patent Owner Overland Storage, Inc. filed a request for rehearing of the final written decision holding that claims 1-11 of U.S. Patent No. 6,328,766 are unpatentable. The basis for the patent owner's...more

Inter Partes Review Requested for MiMedx Tissue Graft Patent

Tissue Transplant Technology Ltd. and Human Biologics of Texas Ltd. (“the Petitioners”) recently filed a petition with the Patent Trial and Appeal Board requesting inter partes review of U.S. Patent No. 8,597,687 (“the ’687...more

Court Declines To Lift Stay Pending IPR

Princeton Digital Image Corporation v. Konami Digital Entertainment Inc., et al., C.A. No. 12-1461-LPS-CJB; Princeton Digital Image Corporation v. Ubisoft Entertainment SA, C.A. No. 13-335-LPS-CJB, January 14, 2015....more

PTAB Update -- No Institution of CBM Patent Review for Jazz's Orange-Book Listed Patents

On January 13, 2015, the Patent Trial and Appeal Board ("PTAB" or "Board") denied institution of four covered business method ("CBM") patent review petitions filed by Par Pharmaceutical, Inc. ("Par"), Roxane Laboratories,...more

Serial Objections to Evidence Are Not Required if Supplemental Evidence Is Filed and Served

American Honda Motor Co., Inc. v. American Vehicular Sciences LLC - The U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) concluded that a party need not renew an objection to evidence if...more

Deposition of Declarants Is Limited after Routine Discovery

Valeo, Inc. v. Magna Electronics, Inc. - In an Order on Conduct of the Proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s request to depose a...more

Pro Se Not Welcome at PTAB

Shire Development LLC v. LCS Group, LLC - Denying a request from patent owner’s counsel to withdraw from an inter partes review (IPR), the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board)...more

Navigating Degrees of Separation: Impermissible Incorporation by Reference

T-Mobile USA, Inc. v. Mobile Telecoms. Technologies, LLC - Following a conference call held with respect to three separate proceedings presenting an identical issue, the U.S. Patent and Trademark Office’s Patent Trial...more

Patent Owner Must Distinguish Universe of All Known Prior Art to Substitute a New Claim

Corning Optical Commc’ns RF, LLC v. PPC Broadband, Inc. - Detailing the requirements for amending claims in an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or...more

Same Prior Art May Be Considered Differently in Connection with Different Petitions

In re Petition for Inter Partes Review by Mitsubishi Plastics, Inc. - In a request for a rehearing of an earlier decision denying institution of inter partes review, the Patent Trial and Appeal Board (PTAB or Board)...more

PTAB Authorizes the Filing of a Motion for Sanctions Against Inventor

In IPR2014-00739 involving petitioner Shire Development LLC and patent owner LCS Group, LLC, the petitioner sought authorization to file a motion for sanctions against the inventor based on his communications with petitioner...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

Person of Skill in Art Depends on Claim Scope

Carl Zeiss SMT GmbH v. Nikon Corp. - The Patent Trial and Appeal Board (PTAB or Board) has explained that arguing a high-level of skill in a narrow art, even in cases involving complex technology, will not exclude an...more

PTAB Update -- The Board Grants Its Second Motion to Amend (At Least in Part)

For only the second time, the Patent Trial and Appeals Board ("PTAB" or "Board") granted a motion to amend claims. However, even though these two current motions were only granted-in-part, the fact that some claim amendments...more

Requests for Additional Discovery Governed by Garmin Factors

Seoul Semiconductor Co., Ltd., et al. v. Enplas Corp. - Addressing the issue of whether a patent owner’s motion for additional discovery was justified based on a newly-filed exhibit, the Patent Trial and Appeal Board...more

Identifying the Real Party in Interest

Samsung Elecs. Co. v. Black Hills Media, LLC; Medtronic, Inc. v. Robert Bosch Healthcare Sys., Inc. - Two recent decisions from the Patent Trial and Appeal Board (PTAB or Board) clarify the test for identifying the...more

Get Your Prior Art Ducks in a Row Before Filing Your Inter Partes Review Petition

National Environmental Products Ltd. v. Dri-Steem Corp.; PNC Bank National Ass’n v. Secure Axcess, LLC - In two recent decisions demonstrating that amending a petition for inter partes review (IPR) with supplemental...more

Three Patent Issues to Watch in 2015

Well, 2014 was a busy year in patent law, and it wasn’t all good news for patent holders. The Supreme Court made 35 USC § 101 a significant hurdle to patenting inventions across a broad swath of technologies, gave more teeth...more

Looking Ahead: Top IP and Technology Trends for 2015

2015 promises to be a challenging year for intellectual property law. Here is Brooks Kushman’s list of significant IP and technology law trends that clients should be prepared for in 2015....more

Common Mistakes in Petitions

Attorney Argument in the Claim Charts - In Tissue Transplant Technology Ltd. v. MiMedx Group, Inc., IPR2015-00320, Paper 6 (December 31, 2014), the Board granted the petition a filing date, but found the claim charts...more

Rehearing . . . Granted?

In Handi Quilter, Inc. v. Bernina International AG, IPR2014-00270, Paper 17 (December 31, 2014), the Board granted petitioner’s request for rehearing of the Board’s decision denying institution of inter partes review....more

And Cats and Dogs Living Together . . .

Well perhaps not the mass hysteria that Dr. Venkman anticipated in Ghostbusters, but the granting of a motion to amend is still an unusual occurrence. However, in Riverbed Technology Inc. v. Silver Peak Systems, Inc.,...more

Failure to Name Real Party in Interest Dooms Petition

In Paramount Home Entertainment Inc. v. Nissim Corp., IPR2014-00961, Paper 11 IPR2014-00962, Paper 11 (December 29, 2014), the Board denied institution of inter partes review of claims 1–27 of U.S. Patent No. 7,054,547 for...more

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