Inter Partes Review Proceedings

News & Analysis as of

ITC Pilot Program to Expedite Rulings on Whether Exclusion Orders Cover Redesigns and New Products

On February 24, 2015, the ITC announced a new pilot program to decide whether redesigns or new products are covered by ITC exclusion orders. The announced goal of the program is to test the use of expedited procedures for the...more

Amending Claims Before the PTAB: What Have We Learned From the Board?

When Congress enacted the America Invents Acts in 2011, they created three new mechanisms to challenge issued claims at the Patent Office – Covered Business Method patent review, Post-Grant Review, and Inter Partes Review...more

Polsinelli Podcasts - Hedge Funds Now Using IPR Challenges [Video]

The patent world is watching to see the ramifications of a recent patent challenge that observers are calling the first of a kind. It involves a recently filed IPR Petition by a Hedge fund. How might this impact the stock...more

PTAB Allows Petitioner to Join Its Own Previously Filed Inter Partes Review

In Target Corp. v. Destination Maternity Corp., IPR2014-00508, the Patent Trial and Appeal Board (PTAB) granted Target Corporation’s Request for Rehearing on its previously denied Motion for Joinder, and ultimately granted...more

Patent Trial and Appeal Board - Multi-Petition Challenges of a Patent

Background – Multiple Petitions - Multiple Petition Filings in PTAB Trials (IPR/PGR/CBM) - •The statutes for IPR, PGR and CBM do not provide many limits on filing of petitions –Numerous patents have been...more

PTAB Update -- Biopharmaceutical Edition

Earlier this week, the Patent Trial and Appeal Board ("PTAB" or "Board") handed down what is thought to be the first set of inter partes review ("IPR") Final Written Decisions ("FWDs") in the biopharmaceutical industry. And...more

A Slip of the Pen May Cost You Your IPR

The Patent Office is getting inter partes review (IPR) petitions by the boat load. Some patent challengers are adding to the volume by filing numerous IPRs against a single patent. They use each IPR for a distinct set of...more

District Court Denies Motion to Lift Stay Pending Inter Partes Review Even Where Plaintiff Agreed to Not Pursue Claims That Were...

Barco filed a patent infringement action in September 2011 against Defendants Eizo Nanao Corporation and Eizo Nanao Technologies, Inc. ("Eizo"), alleging that Eizo infringed various claims in U.S. Patent No. 7,639,849 (the...more

The Iron Law of Unintended Consequences - (with apologies to Robert Michels)

It is a certainty that no matter what action is taken (by an individual, a group, or especially a legislative body) that there will be unintended consequences. It is also true that those unintended consequences, like the...more

Pharmaceutical Patent Score a Win - Amneal Pharms., LLC v. Supernus Pharms., Inc.

In three separate but related final written decisions in the first successful defense of a pharmaceutical patent in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board...more

Draft Available Only as a Password-Protected Download Is Not a Printed Publication - Samsung Electronics Co. Ltd. v. Rembrandt...

Addressing a petition to institute an inter partes review of a patent for communicating between different modem types, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) declined to institute...more

Divided Federal Circuit Panel Upholds Patent Office’s “Broadest Reasonable Interpretation” Standard for Construing Claims in...

In a 2-1 decision in In re Cuozzo Speed Technologies LLC, No. 14-1301 (Fed. Cir. Feb. 4, 2015), the Federal Circuit recently held that the Patent Office may apply the “broadest reasonable interpretation” standard to construe...more

Declarant Must Be Made Available for Deposition in the United States - Square, Inc. v. REM Holdings 3, LLC

Addressing the location of a deposition of patent owner’s declarant, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) concluded that, absent an agreement between the parties to...more

Final Decision in NuVasive’s Inter Partes Review of Warsaw Orthopedic Patent

The Patent Trial and Appeals Board (the “Board”) recently issued Final Written Decisions disposing of two inter partes reviews that NuVasive filed in mid-2013 regarding U.S. patent number 8,444,696 (the ’696 Patent). The ’696...more

District Court Action Dismissed Without Prejudice Does Not Bar Filing of IPR Petition - Nautique Boat Co., Inc. v. Malibu Boats,...

Addressing whether a district court action dismissed without prejudice bars a filing of an inter partes review (IPR) petition under 35 U.S.C. § 315(a)(1), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal...more

PTAB Warns Patent Owner that Not Participating Will Result in Adverse Judgment - Shire Dev. LLC v. LCS Group, LLC

Faced for the first time with a patent owner unwilling to participate in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB or Board) permitted the filing of a paper...more

Petitioners Denied Second Bite at IPR Petition - Biodelivery Sciences Int’l, Inc. v. RB Pharms. Ltd.; Standard Innovation Corp. v....

In two separate but similar written decisions involving challenged patents that were already the subject of instituted proceedings, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) denied...more

If It’s Important, Don’t Put It in a Footnote - Cisco Sys., Inc. v. C-Cation Techs.

In a decision recently designated as “informative” and addressing the issue of using footnotes to cite to a 200-plus-page declaration to support conclusory statements in an inter partes (IPR) review petition, the Patent Trial...more

Broadest Reasonable Interpretations for Inter Partes Review Proceedings Affirmed

The U.S. Court of Appeals for the Federal Circuit recently issued the first decision in an appeal of a final decision of the Patent Trial and Appeal Board (the "Board") under the America Invents Act ("AIA"). In the 2-1...more

Court Denies Motion to Stay Pending New Inter Partes Review ("IPR") Denied Where PTO Had Previously Declined to Institute an IPR...

The defendant, Samsung, had previously filed IPRs on several of plaintiff's patents, which were granted and denied in part. After the plaintiff reduced its asserted claims to those that the PTO had declined to institute...more

Federal Circuit affirms PTAB in first IPR final written decision appeal

The Federal Circuit recently issued its first ruling on an appeal from an inter partes review (IPR) final written decision, In re Cuozzo Speed Technologies. In doing so, the court affirmed the USPTO’s Patent Trial and Appeal...more

Game Over for Myriad -- Update: (Or, and then there was one were none)

As discussed for the past month, Myriad has finally given up trying to defend its BRCA gene testing franchise. The one remaining matter, Myriad's case against GeneDx has settled, as announced by the company today....more

Federal Circuit IPR Scoreboard PTAB: 2 Patent Owner: 0

Last week the Federal Circuit issued its first decision in an appeal of a final decision from a post-issuance review proceeding under the America Invents Act. In a 2-1 decision, the Federal Circuit affirmed a Patent Trial and...more

IP Newsflash - February 2015 #2

FEDERAL CIRCUIT CASES - Federal Circuit Declines to Extend Patent Exhaustion Doctrine - In a February 10, 2015 decision, the Federal Circuit reversed a grant of summary judgment of non-infringement under the...more

Court Continues Stay Pending Inter Partes Review Even Though PTO Declined to Institute Review on Patent

The district court had previously stayed the patent infringement action between Nidec Motor Corporation and Broad Ocean Motor pending the PTO's decision on whether to institute an inter partes review on three of the...more

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