Patent Trial and Appeal Board

News & Analysis as of

Inter Partes Review Not Stayed, Despite Looming Patent Ownership Trial

Symantec Corp. v. RPost Commc’ns Ltd. - Addressing a motion to stay an inter partes review (IPR) by the patent owner, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the Board) denied the...more

PTAB on Analogous Art

Schott Gemtron Corp. v. SSW Holding Co., Inc. - In a final written decision addressing the patentability of claims challenged as obvious, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the...more

Counsel May Confer with a Witness Between Cross-Examination and Re-Cross, but the Witness Might Be Re-Crossed on the Substance of...

Organik Kimya AS v. Rohm and Haas Co. - In an order regarding allowable communications between counsel and witness, the Patent Trial and Appeal Board (PTAB) held that counsel may confer with a witness between the end...more

PTAB Grants Request for Rehearing Relating to Procedure for Serving Petitions

Facebook, Inc. v. Rembrandt Social Media, L.P. - In an order granting a request for rehearing to address the issue of a filing date of a petition for inter partes review (IPR), the U.S. Patent and Trademark Office’s...more

The PTAB Authorizes the Patent Owner to File Its Motion for Leave to Take Discovery of General Electric on Possible Privity with a...

In General Electric Co. v. Transdata, Inc., the patent owner requested authorization to file a motion for leave to take discovery of petitioner General Electric regarding whether GE is in privity with a defendant in...more

Petitioner Barred from Raising Arguments Not in Petition

TRW Automotive US LLC v. Magna Elecs., Inc. - Addressing the petitioner’s request for rehearing of a denial for review, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the Board) denied the...more

The Pitfalls Of Incorporation By Reference And Numerous Arguments In Inter Partes Review

The Leahy-Smith American Invents Act provides post-grant procedures for challenging the validity of a granted patent before a panel of administrative law judges from the Patent Trial and Appeal Board (the “Board”). The United...more

Ropes & Gray: Advantages of the Patent Trial and Appeal Board [Video]

There are arguments that you could never present and win effectively in a jury trial that you can present at the U.S Patent Trial and Appeal Board (PTAB). The board has rocketed to a very leading role even in this first year...more

Surviving PTAB Trials As A Patent Owner: Protecting Your Portfolio From The PTAB "Death Squads"

In 2013, then Chief Judge Rader of the United States Court of Appeals for the Federal Circuit coined the phrase “patent death squads” to describe the panels of the Patent Trial and Appeal Board (“PTAB”). As of the date of...more

PTAB Update -- Is "Broadest Reasonable Interpretation" the Appropriate Standard?

One of the more controversial rules concerning PTAB trials promulgated by the USPTO in the wake of the America Invents Act was the adoption of the "broadest reasonable interpretation" ("BRI") claim construction standard for...more

Patent Owners: Better Address All Obviousness Arguments Raised by Petitioner

Pharmatech Solutions, Inc. v. LifeScan Scotland Ltd. - In a final written decision addressing an obviousness challenge, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB, the Board) found the...more

PTAB Addresses Issue of Whether IPR Prior Art is Enabling

A “Hail Mary” of sorts, for Patent Owners, in their fight to defend the patentability of a challenged patent, can be an argument that a particular prior art reference is not relevant to the patentability analysis because it...more

Trademark Review - Philips Electric Toothbrush and McSweet

MCSWEET Gets Pickled: The Board Refuses Registration of MCSWEET for Pickled Vegetables on the Grounds of Confusingly Similarity to, and Likely Dilution of,McDonald’s Family of “MC” Marks - McSweet, LLC filed...more

Supplemental Information Authorization Hard to Come By

International Business Machines Corporation v. Intellectual Ventures II LLC - The Patent Trial and Appeal Board (PTAB, the Board) denied a motion by a petitioner to file a motion for supplemental information to...more

Dissents and Concurrences Popping up in IPR Proceedings

The PTAB has been remarkably consistent to date in its decisions regarding the variety of issues in inter partes review practice. Issues both simple and complex have typically been resolved by one panel and future panels,...more

Post-Grant Insights: The Significance of a Three-Judge Panel [Video]

The three-judge panels at the U.S. Patent Trial and Appeal Board (PTAB) are something that we've never seen before in this country. The feeling that our clients are getting a fair and careful read from this really experienced...more

The Narrow Scope of Supplemental Discovery in an Inter Partes Review

Square, Inc., v. REM Holdings 3, LLC - Addressing issues of limited discovery and the requirements of a motion for supplemental discovery, the Patent Trial and Appeal Board (PTAB) denied supplemental discovery, finding...more

The PTAB Warns Attorney That Speaking Objections May Warrant Exclusion of Expert's Testimony

In an inter partes review Medtronic Inc. et al. v. Troy R. Norred, M.D., the Petitioner sought guidance from the Board regarding the Patent Owner's objections during the deposition of an expert appearing on behalf of the...more

Rare Grant (in Part) of an IPR Motion to Exclude

Motions to Exclude Evidence have been one of the features of inter partes review practice that have, to date, had a less significant effect than expected. Very few motions have been granted, largely because the Board...more

Know the Patent Specification Before Filing a Motion to Amend

Veeam Software Corp. v. Symantec Corp. - Addressing issues of claim construction and the requirements for a motion to amend, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) ruled that the...more

An Overdue Discussion of the PTABs Grant of the First IPR Motion to Amend

It is hard to explain how this post, discussing the first ever granted Motion to Amend in an inter partes review, sat in “draft” mode for over 5 months. This is especially perplexing given the difficulty Patent Owners are...more

Post-Grant Insights: The Need for Seamless Coordination of District Court & PTAB Litigation [Video]

The key to a critical strategy is having a vision for how you are going to win the war, even if you lose individual battles. By adding the U.S. Patent Trial and Appeal Board (PTAB) judges to District Court to the jury, a...more

PTAB Denies Motion to Amend a Motion to Amend; Reason: Delay

Tandus Flooring, Inc. v. Interface, Inc. - In response to patent owner’s request to file a motion to amend a motion to amend made approximately one month before oral hearing, the U.S. Patent and Trademark Office’s...more

IP|Trend: Inter Partes Review: Is it Litigation or Something Else? [Video]

For two years we’ve seen the inter partes review process play out. What are the procedures like? Does it look like litigation or more like a foreign planet that IP litigators would not recognize? Attorneys Cyrus Morton and...more

PTAB Shows a Willingness to Intervene in Deposition Disputes

Experienced district court litigators are reluctant to “call the judge” when a dispute arises during a deposition. Judges do not want to take the time to deal with mundane discovery disputes and parties do not want to get on...more

305 Results
|
View per page
Page: of 13