Demonstratives in Post-Grant Proceedings
Four Tips on Preparing Inter Partes Review Petitions
Patent Office Litigation Update: IPR/Supplemental Examination Interplay
Patent Office Litigation Update: IPR Discovery and Evidentiary PTAB Decisions
Patent Office Litigation Update: Impact on Timing
The Perfect Patent Office Litigator
Patent Office Litigation Update: Lessons Learned from Contested Proceedings at the USPTO
Patent Office Litigation Update: Stays at the U.S. District Court
The Decision Maker's Guide to Contested Proceedings Under the American Invents Act
Patent Office Litigation Update: Recommendations Following First Five IPR Trials Instituted
Succeeding on a lone ground of unpatentability, Hewlett-Packard was able to get all 4 challenged claims of an MCM patent into a trial for inter partes review in a case styled as Hewlett-Packard Co. v. MCM Portfolio, LLC...more
In a concise decision, iOnRoad was able to get three challenged claims of a Mobileye Technologies patent into a trial for inter partes review in a case styled as iOnRoad, Ltd. v. Mobileye Techs., Ltd. (IPR2013-00227),...more
Having considered the numerous requests for rehearing filed in relation to orders granting an IPR trial (HERE), we now turn to all the other orders relating to requests for rehearing, including the one order that actually...more
In a case marked by a great number of grounds of unpatentability, Covidien was able to get 14 challenged claims of an Ethicon Endo-Surgery patent into a trial for inter partes review in a case styled as Covidien LP v. Ethicon...more
As parties to inter partes review proceedings (and the PTAB for that matter) have felt their way through the first year of IPR proceedings, there have been ample disappointments and, therefore, related Motions for Rehearing....more
Meeting success on almost every asserted ground, Syntroleum was able to get 20 challenged claims of a Neste Oil patent into a trial for inter partes review in a case styled as Syntroleum Corp. v. Neste Oil Oyj...more
On November 25, 2013, Consumer Watchdog (“CW”) and Wisconsin Alumni Research Foundation (“WARF”) responded to the Federal Circuit’s Order directing each party to brief whether CW, as a third party requester, has standing to...more
Following a recent hearing involving K&L Gates’ lawyers before the Patent Trial and Appeal Board (“PTAB”) on behalf of the patent owner in an inter partes reexamination, several key practice tips emerged that may be useful as...more
In concise decision, Google was able to get 9 challenged claims of a Whitserve patent into a trial for inter partes review in a case styled as Google, Inc. v. Whitserve LLC (IPR2013-00249), involving U.S. Pat. No. 6,981,007....more
Three patent cases highlight both the potential advantages and potential limitations of Inter Partes and Covered Business Method strategies before the PTAB. In the last two weeks the Patent and Trial and Appeal Board...more
The implementation of the Leahy-Smith America Invents Act (“AIA”) has changed the patent law landscape in the United States. One of the important changes brought about by the AIA was the introduction of Inter Partes Review...more
The PTAB issued its first final written decision in the new Inter Partes Review (“IPR”) post-grant proceeding on November 13, 2013, invalidating the claims under review. In its decision, the PTAB rejected patent owner...more
On November 13, 2013, the U.S. Patent Trial and Appeal Board (PTAB) issued its first final decision in an inter partes review (IPR) proceeding brought by Garmin under the new administrative procedures established by the...more
Robert Greene Sterne, founding director of the intellectual property law firm Sterne, Kessler, Goldstein & Fox, discusses a critical topic in the current patent office litigation landscape -- demonstratives in post-grant...more
The popularity of IPR proceedings will likely increase as assignor estoppel does not apply to IPRs. Inter Partes Review (IPR) proceedings have become a very popular method of challenging patent validity for actual and...more
As a follow up to our post regarding issues that have arisen to date regarding supplemental evidence, it is worth noting two recent PTAB decisions in which the proper procedure for introducing supplemental evidence in...more
Early expectations of inter partes review proceedings were that the PTAB would be reticent to allow supplemental evidence to be entered by either party – there would be no second bites at the apple for participants in IPR...more
Running a bit short on space in your IPR brief? Think you might sneak one past the Board by stretching those margins by a tenth of an inch or two? Think again. It should come as no surprise given that the inter partes review...more
As more IPR proceedings wind their way through the discovery phase, issues relating to depositions are starting to pop up in PTAB decisions. Here, we take a look at some recent Board decisions that help clarify those issues...more
On October 15, 2013, Dominion Dealer Solutions, LLC filed a complaint in the U.S. District Court for the Eastern District of Virginia seeking review of the USPTO’s decisions denying petitions to institute inter partes review...more
If you are like thousands of small American businesses, you might have received a dubious “cease and desist” letter during recent months from an LLC with an odd name. The LLC’s name has six letters, the first and fourth of...more
Challenging a patent of a major industry rival, Adidas was able to get all 46 challenged claims of a Nike patent into a trial for inter partes review in a case styled as Adidas AG v. Nike, Inc. (IPR2013-00067), involving U.S....more
In This Issue: The Blurred Lines of What Constitutes Copyright Infringement of Music: Robin Thicke v. Marvin Gaye’s Estate; Terminology in a Computer Readable Medium Claim —“Physical,” “Tangible,” or “Storage”— Can...more
On September 16, 2012, Inter Partes Review (IPR) replaced Inter Partes Reexamination (IPX) as an avenue for third party patentability challenges in the United States Patent and Trademark Office (PTO). Arising from the 2011...more
Jon Wright, a director at the intellectual property law firm Sterne, Kessler, Goldstein & Fox, gives would-be petitioners four tips for preparing for inter partes review under the America Invents Act. Wright tells petitioners...more
