Patent Trial and Appeal Board

News & Analysis as of

Motion to Stay Pending Inter Partes Review Denied Where Plaintiff Had Prevailed in Previous Inter Partes Review

In this patent infringement case, Plaintiff, CTP Innovations, LLC ("CTP") sued V.G. Reed and Sons, Inc. ("Reed") to stop Reed's alleged infringement of two United States patents, which pertain to systems and methods of...more

IP Buzz - Post Grant Practice - August 2014

In this issue: - IPR Spotlight Series: Strategically Using Requests for Joinder in IPR - Lessons Learned From the First Successful Motion to Amend in an Inter Partes Review - Reaching a Milestone: Filing...more

§ 325(d) Used by the Board to Deny Petitions for Inter Partes Review

We wrote last week about the Board’s willingness to come to a different conclusion than that of the original patent examiner on the adequacy of a 131 declaration. Further, we have discussed in the past how the Board has been...more

IPR Spotlight Series: Strategically Using Requests for Joinder in IPR

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

Reaching a Milestone: Filing of the First Ever Petition for a Post-Grant Review

On August 5, 2014, a milestone was reached for AIA trials. For the first time, a petition for a Post Grant Review (PGR) was filed. As was the case with the first covered business method review, the first PGR will likely be...more

131 Declaration That Was Successful in Prosecution Deemed Insufficient in Inter Partes Review

The Board proved willing to overturn a previous patent examiner’s judgment in another type of issue in Iron Dome LLC v. E-Watch, Inc., IPR2014-00439, where, in instituting an inter partes review trial, the Board found that...more

Lessons Learned From the First Successful Motion to Amend in an Inter Partes Review

While the Leahy-Smith America Invents Act (AIA) provides a mechanism that allows amendments to patents challenged in an inter partes review, until recently, all motions to amend have failed. The final decision in...more

Consider this Potential Downside of Inter Partes Review: Denial of the Petition May Be Used Against You in a Concurrent District...

In many instances, it may be advantageous to challenge patent validity via an AIA trial in front of the Patent Trial and Appeal Board (PTAB). Despite all of the advantages to an AIA trial, a potential AIA trial petitioner...more

First Post Grant Review Petition Filed

After nearly a dozen false starts, it appears that the first genuine “Post Grant Review” (PGR) petition may have been filed with the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Motion Practice In Inter Partes Review

Inter Partes Review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”) have become a leading forum for patent disputes. IPRs are designed to be a faster and less expensive alternative to district court...more

Finding Evidence of Secondary Considerations

In Square, Inc. v. REM Holdings 3, LLC, IRP2014-00312, Paper 20 (Augist 14. 2014) the patent owner was seeking evidence of secondary considerations. The Board denied additional discovery, but found that the patent owner made...more

Beware the Death Squad

On August 14, 2014, Law360 quoted PTAB Chief Judge James Smith commenting that the Board’s reputation as a patent “death squad” – a phrase coined by former Federal Circuit Chief Judge Randall Rader. ...more

A Patent Owner's Preliminary Response Must Rebut Statement Of Material Facts In The Petition

Inter Partes Review (“IPR”) proceedings are proving to be a highly cost efficient means to challenge patent claims as either lacking novelty under 35 U.S.C. § 102 or as being obvious under 35 U.S.C. § 103. However, a...more

Ongoing Developments in Patent Law: Claim Construction on Appeal, Indefiniteness, and PTAB Decisions

There are a few patent cases to keep track of in the future that may have an impact on claim construction, indefiniteness, and Patent Trial and Appeal Board (PTAB) decisions. ...more

Objective Evidence Based on Unclaimed Species Insufficient Nexus

Gnosis SpA v. South Alabama Medical Science Foundation - In the final written decision of an inter partes review, the Patent Trial and Appeal Board (PTAB) found all claims at issue unpatentable, concluding that the...more

The PTAB Is Unimpressed by Unsupported Attorney Argument

BAE Systems Info. and Electronic Sys. Integration, Inc. v. Cheetah Omni, LLC - In a final written decision, the Patent Trial and Appeal Board (PTAB) found several claims of the patent at issue unpatentable as...more

Inter Partes Review Still Difficult for Patent Owners

EcoWater Systems LLC v. Culligan International Co. - In a final written decision, the Patent Trial and Appeal Board (PTAB, the Board) found several claims subject to the requestor’s petition to be unpatentable over the...more

Indemnity Agreement Does Not Equate to a “Real Party in Interest” to Create Time-Bar for Inter Partes Review

Apple v. Achates Reference Publishing - The Patent Trial and Appeal Board (PTAB, the Board) has concluded that an inter partes review of a patent is not time-barred if a petition was filed more than one year after the...more

PTAB Issues First Precedential Opinion in an AIA Post-Grant Proceeding

During an AIA Post-Grant Proceeding, the Patent Trial & Appeal Board (“PTAB”) can issue three types of decisions: (1) routine, (2) informative, and (3) precedential. Routine decisions are the most common and have limited...more

Dissent at the PTAB Leads to … Unpatentability

Smith & Nephew, Inc. v. ConvaTec Technologies, Inc. - In its final written decision, the Patent Trial and Appeal Board (PTAB) found that 13 claims of the patent-at-issue were anticipated or obvious and rejected the...more

Mother, May I?

In Toyota Motor Corporation v. American Vehicular Sciences LLC, IPR2013-00415, Pape 51, IPR2013-00416, Paper 35, IPR2013-00417, Paper 62 (August 7, 2014), the patent owner submitted a notice of withdrawal of motion to amend...more

PTAB Discovery of Secondary Considerations of Non-obviousness: How to Get Necessary Prior Authorization

Discovery limitations play an important role in the differences between district court patent litigation and actions at the U.S. Patent Trial and Appeal Board (PTAB). So far, the PTAB has placed significant restrictions on...more

More Details, Details

Samsung Electronics Co., Ltd. v. Affinity Labs of Texas, IPR2014-01184, Paper 3, IPR2014-01182, Paper 3, IPR2014-01181, Paper 3, August 5, 2014), the Board granted the Petition a filing date, but gave the petitioner five...more

Preserving a Complete (and Confidential) Record for Appeal

Now that the first wave of Final Decisions have issued from the PTAB, the question has arisen regarding what to do with sealed documents in an IPR record while the decision is appealed. Pursuant to Patent Office Trial...more

PTAB Grants a Patent Owner’s Request to Amend

In an Inter Partes review (IPR) proceeding before the PTAB, a patent owner is not automatically afforded the right to amend the challenged claims. Rather, the patent owner has a burden of establishing that it is entitled to...more

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