Inter Partes Review Proceedings

News & Analysis as of

Insights from a Recent Panel on Navigating AIA Trials

by Venable LLP on

On July 14, 2014, the Bar Association of the District of Columbia presented "Navigating AIA Trials at the USPTO," a panel discussion on the Leahy-Smith America Invents Act (AIA) trials, which took place at the D.C. office of...more

IPR Spotlight Series: What to Do When the PTAB Denies Your Petition to Institute IPR

by Venable LLP on

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

New Guidance From the Federal Circuit on Motions to Stay Litigation Pending a PTAB Proceeding

by Foley & Lardner LLP on

In VirtualAgility Inc. v. Salesforce.com, Inc., No. 2014-1232 (July 10, 2014), the Federal Circuit issued its first opinion directed to the issue of when it is appropriate to grant a stay of a district court patent...more

IPR Update -- The First Pharma IPR Decisions

by McDonnell Boehnen Hulbert & Berghoff LLP on

Late last month, while many of us were getting ready to attend the BIO International Convention in San Diego, the Patent Trial and Appeal Board ("Board") issued four related inter partes review opinions, marking what many...more

Litigation Stays Pending IPR: 66% Success Rate

by Harness, Dickey & Pierce, PLC on

LegalMetric has released a report of 212 decisions on litigation stays pending Inter Partes review. The report indicates that stays are granted 65.6% of the time and the time to decision averages 2.1 months. For more...more

Challenging Prior Art Status In Post-Grant Proceedings

by Baker Botts on

An inter partes review (“IPR”) proceeding allows a party to challenge the validity of a patent before the Patent Trial and Appeals Board (“PTAB”) of the U.S. Patent and Trademark Office (“USPTO”). In an IPR proceeding,...more

Institution Decisions on July 15, 2014

by Harness, Dickey & Pierce, PLC on

Institution Decisons - In Symantec Corporation v. RPOST Communications Limited, IPR2014-00353, Paper 15 (July 15, 2014), the Board denied inter partes review of 1-30 (“the challenged claims”) of U.S. Patent No....more

Patent Filings and Institution Decisions on July 11, 2014

by Harness, Dickey & Pierce, PLC on

New Filings - Samsung Electronics Co., Ltd. filed IPR2014-01142 challenging U.S. Patent No. 7,917,843, assigned to Arendi AS. Samsung Electronics Co., Ltd. filed IPR2014-01143 challenging U.S. Patent No. 7,496,854....more

Patents Filed and Institution Decisions on July 10, 2014

by Harness, Dickey & Pierce, PLC on

New Petitions Filed - Actavis, Inc. filed IPR2014-01126 (July 10, 2014) challenging U.S. Patent No. RE38,551. NEC Corporation of America filed IPR2014-001131 (July 10, 2014) challenging U.S. Patent No. 6,819.923,...more

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

Patents Filed and Institution Decisions on July 9, 2014

by Harness, Dickey & Pierce, PLC on

New Petitions Filed - RPC Formatec GmbH filed IPR2014-01127 challenging U.S. Patent No. 8,662,075....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

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