Inter Partes Review Proceedings

News & Analysis as of

Five Considerations When Choosing How to Challenge Patent Validity

Inter partes review (IPR) is quickly becoming a popular choice for challenging the validity of a patent. The America Invents Act (AIA) established IPR as a mechanism for challenging patent validity through an evidentiary...more

Court Won't Review USPTO Denial of Inter Partes Review

In a decision issued on April 18, 2014, Judge Payne of the U.S. District Court for the Eastern District of Virginia granted the USPTO’s motion to dismiss the case brought by Dominion Dealer Solutions, LLC to challenge the...more

IP Newsflash - April 2014

For the First Time, PTAB Rules for Patent Owner After Inter Partes Review Trial Instituted - A PTAB panel has held, for the first time, that all challenged claims of a patent are valid following completion of an inter...more

Cumulative Art Rejections v. Estoppel: Balancing Competing Interests In IPR Petitions

Inter Partes Review, or IPR, is one of the new procedures implemented through the Leahy-Smith America Invents Act that challenges a patent’s validity at the Patent Trial and Appeals Board (PTAB) of the United States Patent...more

Stays Pending Inter Partes Review - New Strategies For The New Rules

As the Patent Trials and Appeals Board (“PTAB”) works through the first wave of filings under the new inter partes review (“IPR”) procedures, district courts are addressing an increasing volume of requests for stays pending...more

The First (and Second) Outright Win for the Patent Owner

In a heartening (to patent owners) reminder that invalidation in an IPR is not automatic, in ABB Inc. v. Roy-G-Biv Corp., IPR2013-00062 and IPR-00282, Paper 84 (April 11, 2014), the Board found that ABB failed to show that...more

Pre-AIA Litigation Triggers Time Bar for Inter Partes Review - Apple Inc. v. VirnetX, Inc. and Science Applications International...

In response to a petitioner’s request for rehearing of a decision denying institution of an inter partes review (IPR) proceeding, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) reiterated that...more

No “Second Bite at the Apple” for Non-Petitioner Defendants Seeking Stay Based on Pending IPR - Evolutionary Intelligence, LLC v....

Addressing whether a non-petitioner defendant seeking a stay pending inter partes review (IPR) should be bound by the statutory estoppel requirements for an IPR petitioner, a district court granted the defendant’s motion for...more

1000 Petitions!

As of April 4, 2014, more than 1000 petitions for inter partes review have been filed. Since the first day, inter partes reviews have taken off with a steady stream of patent challenges....more

PTAB Terminates IPR Sua Sponte Where Claims Indefinite

As dictated by 35 U.S.C. § 311, a petitioner can pursue inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or “Board”) based on certain grounds of anticipation or obviousness under 35 U.S.C. §§ 102...more

The Board is Hesitant to Stay Proceedings

In International Securities Exchange, LLC v. Chicago Board Options Exchange, Inc., CBM2013-00049, CBM2013-00050, and CBM2013-00051, Paper 19, (March 28, 2014), the Board declined to stay there covered business method reviews...more

Successfully Defends Another Patent in Inter Partes Review

The news has been dreary, to date, for Patent Owners in Inter Partes Review proceedings. In view of that environment, we are proud to announce that Harness Dickey has successfully defended a second patent in an IPR...more

Stays pending inter partes review: the first year

The America Invents Act, adopted in September 2011, introduced the new inter partes review (IPR) procedure, providing an opportunity to challenge the validity of issued patents at the US Patent and Trademark Office. Thus far,...more

Institution Decisions on March 26, 2014

Institution Decisions - The Board instituted an inter partes review in Apple Inc. v. PersonalWeb Technologies, LLC., IPR 2013-00596, Paper 9 (March 26, 2014) of claims 24, 32, 70, 81, 82, and 86 (all of the challenged...more

Inter Partes Review Terminated Where PTAB Found That Challenged Claims Were Indefinite

Petitioner, BlackBerry Corporation and BlackBerry Limited ("Blackberry"), filed a petition on October 30, 2012, for an inter partes review ("IPR") of claims 1-12 of US Patent No. 6,871,048 ("the ?048 patent"). On March 18,...more

IPR Update -- The First Biotech IPR Decisions

Earlier this month, on March 6, 2014, the Patent Trial and Appeal Board ("Board") issued three related inter partes review opinions, marking the first set of opinions related to either the Biotech or Pharmaceutical industry. ...more

Institution Decisons on March 24, 2014

Institution Decisions - In Aker Biomarine AS v. Neptune Technologies and Bioressources Inc., IPR2014-00003, Paper 22 (March 24, 2014) the Board instituted an inter partes review of claims 1-6, 9, 12, 13, 19-29, 32, 35,...more

The Two Front War: Concurrent CBM and IPR

In comScore, Inc. v. Moat, Inc., IPR2013-00503, Paper 16 (March 17, 2014), the Board considered the parties motion to harmonize this inter partes review with a recently filed covered business method review, CMB2014-00071 on...more

Patent Trials Instituted on March 21, 2014

Trials Instituted - The Board instituted an inter partes review of claims 1-31 of U.S. Patent No. 8,147,514 in Arthrex v. Bonutti Skeletal innovations LLC, IPR2013-00633, Paper 10 (March 21, 2014)...more

Inter Partes Review -- A Look Back

March 16, 2014, marks the eighteen-month anniversary of the inter partes review ("IPR") system of challenging issued patents at the Patent Office. We thought that this would be an appropriate time to look back at the last...more

IP Newsflash - Indefiniteness of Claim Language Forces Board to Terminate Inter Partes Review Proceeding

Instead of issuing a final written order regarding patentability, a PTAB panel has terminated an inter partes review proceeding because it was unable to determine the scope of the claims at issue...more

Four More IPR Final Written Decisions Go Against Patent Owners

On Monday, March 10th, the PTAB issued four additional Final Written Decisions, each of which resulting in total victory for the Petitioner. The first three were all related - Micron Tech., Inc. v. Board of Trustees of the...more

The Board Advises How to Settle an IPR

In Commscope, Inc, v. Pangrac and Associates, IPR2013-00461, Paper 11 (March 5, 2014), the Board reminded the parties how to settle an IPR. Generally, the Board expects that a proceeding will terminate after the filing of a...more

March 3, 2014

Institution Decisions - The Board issued an Decision Instituting Inter Partes Review of U.S. Patent No. 5,796,411 in Xerox Corp. v. RR Donnelley & Sons Co., IRP2013-00529. IPR was instittued as to claims 2, 4, and 6,...more

Communications Between Experts Discoverable in Inter Partes Review

Given the rarity of a granted Motion for Additional Discovery, it is worth noting the circumstances of the Board’s decision in Apple Inc. v. Achates Reference Pub., Inc., IPR2013-00080; -00081 (Paper 58), wherein an exchange...more

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