Inter Partes Review Proceedings

News & Analysis as of

The PTAB May Be Taking a More Balanced Approach in Biotech and Pharmaceutical IPRs

Patent challengers were first able to file inter partes review (IPR) petitions on September 16, 2012. Since then IPRs have become an increasingly popular way of challenging the validity of patents. In the first three months...more

Board Discusses Difference Between Supplemental Evidence and Information

Still confused by the difference between supplemental evidence versus supplemental information? Let’s try this again….In Norman International, Inc. v. Andrew J. Toti Testamentary Trust, Russell L. Hinckley, Sr. (Co-Trustee)...more

PTAB Rejects Two Attempts by Patent Owners to Antedate Prior Art

The fact-based nature of conception/reduction to practice issues makes it worthwhile to consider a number of these types of cases as they arise. Here, we discuss such issues from two Board decisions, K-40 Electronics, LLC v....more

PTAB Rules Lab Notebooks Insufficient to Prove Conception and Reduction to Practice

Swearing behind a reference is an enticing option for a Patent Owner, but the Board has again reminded parties that rigorous—and admissible—proof of conception and reduction to practice is still necessary....more

Use Wayback Machine with Caution: PTAB Excludes Website Printouts from Wayback Machine

In a decision on the patent owner’s motion to exclude evidence, the PTAB excluded certain website printouts from the Wayback Machine as lacking authentication. ...more

Federal Circuit Review | March 2015

Patent Office’s Decision To Institute IPR Not Reviewable - In IN RE CUOZZO SPEED TECHNOLOGIES, LLC, the Federal Circuit held it lacks jurisdiction to review the Patent Office’s decision to institute inter partes review....more

Draeger Medical Systems Files For Declaratory Judgment Against My Health

On March 19, 2015, Draeger Medical Systems, Inc. (“Draeger”) filed a Declaratory Judgment action against My Health, Inc. (“My Health”). The complaint alleges that My Health sent a cease and desist letter to Draeger that...more

Post-grant proceedings after the America Invents Act

The America Invents Act (AIA) was passed several years ago. One of the biggest changes it made to the patent landscape was the options for modifying a patent after it was granted by the U.S. Patent & Trademark Office. Prior...more

Recent IPR Guidance From a Trio of Forums

As inter partes review (IPR) practice continues to develop and practitioners feel their way around the edges, the last month brought helpful guidance from a trio of forums: the Federal Circuit, the Central District of...more

District Court Agrees to Stay Action Pending Inter Partes Review ("IPR") But Only if Defendants Agreed to Be Bound by Estoppel...

After the defendants moved to stay a patent infringement action pending an IPR, the district court analyzed the impact of a potential withdrawal of petitioners from the IPR. The district court began its analysis with the...more

Untimely Presentation of Updated Mandatory Notice Is Not a Cause for Termination - Valeo North America, Inc. v. Magna Electronics...

Addressing a petitioner’s untimely Updated Mandatory Notice following a merger, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied a patent owner’s motion to terminate an inter...more

Reduced Deposition Time in Related AIA Proceedings - Petroleum Geo-Services Inc. v. WesternGeco LLC

In an order regarding deposition times for expert witnesses in three related inter partes reviews (IPRs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) ruled that total deposition time...more

Not So Fast: Split Federal Circuit Panel Sided with PTO on Novel IPR Issues

In In re Cuozzo Speed Technologies, LLC, the first ever appeal of the final written decision from an inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or the “Board”), the Federal Circuit decided...more

PTAB Excludes Documents Corroborating Publication Date as Hearsay but Admits Librarian Testimony - Toyota Motor Corporation v....

In a final written decision, the U. S. Patent and Trademark Office Patent (PTO) Trial and Appeal Board (PTAB or Board) granted in part the patent owner’s motion to exclude certain documents purporting to corroborate the...more

Second Bites At the Post-Grant Apple?

The America Invents Act (AIA) gives the Board broad discretion in deciding whether or not to institute an IPR or CBM when the Petition addresses substantially the same prior art or arguments to those previously considered by...more

You Can’t Win if You Don’t Play - Librestream Technologies, Inc. v. Thomason

In two related final written decisions, the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB or Board) invalidated numerous claims across two separate patents after the patent owner decided to not...more

Teaching Away Arguments Fail to Gain Traction with PTAB

A favored, but largely unsuccessful, line of defense for Patent Owners in inter partes review proceedings is the argument that the prior art references-at-issue teach away from their combination. A typical form of this...more

Congress to Consider Alternative Patent Litigation Reform Bill

Last month, a bipartisan group of legislators introduced the so-called “Innovation Act of 2015” (H.R. 9) in the U.S. House of Representatives. That bill proposes numerous reforms to the U.S. patent system, including...more

Would Have Been Obvious to Combine Prior Art that Mentions an Object with Standard Textbook that Describes that Object - Intel...

Addressing the merits in an inter partes review of a patent for improved computer graphics calculations, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (Board) found all challenged claims unpatentable. ...more

No Markman Prior to Oral Argument in IPR - Dr. Michael Farmwald and RPX Corp. v. ParkerVision, Inc.

Addressing whether the U.S. Patent and Trademark Office (PTO) will conduct a separate Markman hearing prior to an oral argument in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) refused, but...more

District Court Declines to Stay Proceeding Pending Inter Partes Review Where Plaintiff and Defendant Were Direct Competitors

Card-Monroe Corp. ("CMC") manufactures tufting machines and equipment. CMC holds several patents that pertain to its machines and equipment. Tuftco Corp. ("Tuftco") is a competitor of CMC, which also engages in the...more

Petitioners Cannot Respond to Substantive Issue Raised in Preliminary Response - VTech, Inc. v. Spherix Inc.

Addressing whether a petitioner in an inter partes review (IPR) can respond to a patent owner’s preliminary response, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) denied the...more

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

Deputy Director Provides Keynote at PTO Day

One day after the U.S. Senate confirmed her nomination as Director of the U.S. Patent and Trademark Office, Deputy Director Michelle Lee provided the luncheon address at the 25th Annual Conference on USPTO Law and Practice...more

January/February Recap

It’s interesting to look at the first two months of 2015 against the backdrop of the previous year. Judge Illston’s orders, for example, suggest that one should not expect much to change in ND Cal judges’ willingness to...more

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