Inter Partes Review Proceedings

News & Analysis as of

Need Nexus Between the Claimed Feature and the Marketed Product to Demonstrate Commercial Success

by McDermott Will & Emery on

St. Jude Med., Cardiology Div., Inc. v. The Bd. of Regents of the Univ. of Mich. - In the final written decision of an inter partes review, the Patent Trial and Appeal Board (PTAB) canceled all claims at issue on...more

The Duty to Indemnify Does Not Create Privity

by McDermott Will & Emery on

Apple Inc. v. Achates Reference Publishing, Inc. - In the final written decisions of two related inter partes reviews (IPRs) concerning patents in the same family, the U.S. Patent and Trademark Office’s Patent Trial...more

Expert Testimony Must Be Supported by Evidence

by McDermott Will & Emery on

Corning Inc. v. DSMIP Assets B.V. - The Patent Trial and Appeal Board (PTAB) issued final written decisions in 10 inter partes review (IPR) challenges. Although early IPR decisions generally have sustained...more

Instruction Not to Answer on Relevance Grounds Improper in IPR Depositions

by Harness, Dickey & Pierce, PLC on

iStock_000001758213XSmallIn Dynamic Drinkware v. National Graphics, IPR 2013-00131, Patent Owner’s counsel prevented Petitioner from questioning a witness by instructing the witness not to answer questions on the ground of...more

Inventor Testimony Irrelevant

by Harness, Dickey & Pierce, PLC on

In International Business Machines Corporation v.Intellectual Ventures II LLC, IPR2014-00180, Paper 22, (July 3, 2014), the Board denied petitioner’s request to file a transcript of the inventor’s testimony as supplemental...more

Details, Details

by Harness, Dickey & Pierce, PLC on

In LG Electronics, Inc., v. NFC Technology LLC, IPR2014-00959 , Paper 3 (Julu 3. 2014), the Board granted the Petition a filing date, but pointed out that the font was incorrect and Petition failed to certifiy that the patent...more

Testimony of Expert Witness: Key Patentability Arguments in Inter Partes Review

by McDermott Will & Emery on

SATA GmbH & Co. KG v. Anest Iwata Corp. - In a final written decision, in an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) rejected a patent owner’s motion to...more

The Board Cannot Misapprehend or Overlooked an Argument Not Presented

by Harness, Dickey & Pierce, PLC on

In Rackspace US, Inc. v. PersonalWeb Technologies, LLC, IPR2014-00062, Paper (July 2, 2014) The Board denied rehearing of its decision not to institute an inter partes review of certain redundant grounds. In its request for...more

Institution Decisions on July 7, 2014

by Harness, Dickey & Pierce, PLC on

Conopco, Inc. dba Unilever v. The Procter & Gamble Company, IPR2014-00506, Paper 17, (July 7, 2014), the Board denied...more

Patent Filings and Institution Decisions on July 3, 2014

by Harness, Dickey & Pierce, PLC on

New Filings - Wireless Seismic, Inc. filed IPR2014-01113 challenging U.S. Pat. 7,124,028, IPR2014-0111 challenging U.S. Pat. 8,644,111 IPR2014-01115 challenging U.S. Pat. 8,296,068, all assigned to Fairfield Industries,...more

Twenty-One Months of Inter Partes Review – By the Numbers

by Harness, Dickey & Pierce, PLC on

Welcome to Volume 6 of our IPR-PGR Quarterly Report. This Report brings news of a large spike in Petition filings and some interesting trends that come from a more significant data set derived from Final Written Decisions....more

Institution Decisions on July 2, 2014

by Harness, Dickey & Pierce, PLC on

The Board instituted an inter partes review in Toyota Motor North America v. Cruise Control Technologies LLC, IPR2014-00280, as to claims 1–3, 5, 12–19, 21–26, and 28–31 of claims 1–5, 12–16, 18, 19, 21, 25–28, and 34–36 of...more

Sur-Reply Authorized By Board in Response to New Expert Testimony in Petitioner Reply by Patent Owner

by Harness, Dickey & Pierce, PLC on

The PTAB has, to date, been very strict about the timeline of events in an inter partes review proceeding, as well as ensuring the proceedings are streamlined. That’s what makes the Board’s decision in Zodiac Pool Systems,...more

Declaratory Testimony from File History is “Affidavit Testimony” Which Requires Deposition

by Harness, Dickey & Pierce, PLC on

Most declaration testimony in an inter partes review proceeding is newly developed as part of the IPR. On occasion, however, parties to an IPR have used previously generated declarations in support their positions. In...more

Expert Declaration Not Allowed as Supplemental Information Related to Claim Constructions

by Harness, Dickey & Pierce, PLC on

Unhappy with the Board’s claim constructions, Patent Challenger in Rackspace US, Inc. and Rackspace Hosting, Inc. v. PersonalWeb Technologies, LLC and Level 3 Communications, (IPR2014-00057, IPR2014-00058, and IPR2014-00062)...more

Wright Medical Technology Files for Inter Partes Review of Orthophoenix Patents

by Knobbe Martens Olson & Bear LLP on

On June 6, 2014, Wright Medical Technology, Inc. (“WMT”) filed first and second petitions with the Patent Trial and Appeal Board requesting inter partes review of both U.S. Patent No. 6,440,138 (“the ’138 Patent”) to Reiley...more

Docs @ BIO -- Federal District Court vs. the PTAB

by McDonnell Boehnen Hulbert & Berghoff LLP on

Yesterday, BIO 2014 presented a session entitled "Navigating Patent Challenges Under the America Invents Act" during which the presenters analyzed the differences between patent challenges in Federal District Court and before...more

The Stats Tell The Story: Why Courts May Be More Likely To Grant Stays Based On IPR Proceedings

by Baker Botts on

Inter Partes Review (“IPR”) proceedings are a powerful tool for challenging the validity of patents before the Patent Trial and Appeal Board (“PTAB”). In addition to their firepower to invalidate patents under §§ 102 and 103,...more

Design Patent Case Digest: Munchkin, Inc. and Toys “R” US, Inc. v. Luv N’ Care, LTD.

by Sterne, Kessler, Goldstein & Fox P.L.L.C. on

Decision Date: April 21, 2014 - Court: Patent Trial and Appeal Board - Patents: D617,465 - Holding: Claimed design is obvious and therefore UNPATENTABLE - Opinion: Petitioners Munchkin, Inc. and Toys...more

Claim Term of Expired Patent Given non-BRI Construction

by Harness, Dickey & Pierce, PLC on

An interesting argument relative to the construction of claim terms in an inter partes review proceeding has been percolating in recent months. Namely – what claim construction should be applied when a patent subject to...more

International Flavors - A True Guide For Amending Claims During An IPR?

by Baker Botts on

Inter Partes Review (“IPR”) has proven to be a popular tool for patent infringement defendants. Among the petitioner-friendly features of IPR is the limited ability for patent owners to amend the challenged claims. For...more

Is the PTAB a Death Sentence for Patent Rights?

by Robins, Kaplan, Miller & Ciresi L.L.P. on

In September 2012, inter partes review (IPR) and covered business method (CBM) patent review procedures launched at the Patent Trial and Appeal Board (PTAB). Proponents of these processes believed that a PTO-affiliated forum...more

Institution Decisions - June 23, 2014

by Harness, Dickey & Pierce, PLC on

Institution Decisions - Johnson Controls, Inc. v Wildcat Licensing WI, LLC, IPR2014-00305 (June 23, 2014), the Board instituted an inter partes review of claims 22-28 of U.S. Patent No. 7,062,831. ...more

IP Buzz - Post Grant Practice - June 2014

by Venable LLP on

In this issue: - Terminal Disclaimer Cannot be Used to Circumvent IPR Review Standard - IPR Spotlight Series: Evaluating Whether to File a Preliminary Patent Owner Response - Unscathed by Review: Recent...more

Judge Griesa Orders Parties to Brief Whether a Patent Prosecution Bar Prevents Defense Counsel From Participating in an Inter...

by Robins, Kaplan, Miller & Ciresi L.L.P. on

Endo Pharmaceuticals Inc. et al. v. Teva Pharmaceuticals USA, Inc. et al. Inter Partes Review. Case Number: 1:12-cv-08060-GWG (Dkt. 68) - One of twelve defendants in patent suits brought by Endo petitioned the...more

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