Patent Trial and Appeal Board

News & Analysis as of

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

Combinations of Predictable Elements from the Prior Art Need Not Be Advantageous - Nuvasive, Inc. v. Warsaw Orthopedic, Inc.

Addressing the propriety of combining prior art in an obviousness analysis, U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (“PTAB” or “Board”) determined that a patent for a spinal implant for...more

Limitations on New Arguments and Legal Authority Presented at Oral Hearing - Intri-Plex Technologies Inc. v. Saint-Gobain...

The U. S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) provided further guidance as to what new matter may properly be raised during oral argument, explaining that parties may not present new...more

Who You Gonna Call? The Board!

The PTAB issued an order providing guidance for responding to potential witness coaching during a deposition recess. Cases IPR2014-00411 and IPR2014-00434 – FLIR Systems, Inc. v. Leak Surveys, Inc. - In an inter...more

Supplementing Information - Post-Institution Pacific Market International, LLC v. Ignite USA, LLC

Addressing a motion to submit supplemental information after institution, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) granted the motion, finding that the information—a supplemental...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

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

Intellectual Property 2014 Year in Review

The year 2014 saw some important developments in the area of intellectual property law. A number of intellectual property-related issues even made national headlines. Who can forget the public debate over the rightful...more

Prior Declaratory Judgment Action Fatal to CBM Petitioner - GTNX, Inc. v. INTTRA, Inc.

In a decision bringing four instituted covered business method (CBM) review proceedings to a full stop, the Patent Trial and Appeal board (PTAB or Board) reiterated that a petitioner’s declaratory judgment action filed before...more

Settlement Between Parties Does Not Affect Final Written Decision - Salesforce.com, Inc. v. VirtualAgility, Inc.

Addressing the issues of vacating a final written decision and terminating a trial proceeding, the Patent Trial and Appeal Board (PTAB or Board) denied the patent owner’s request for authorization to file a motion to vacate...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

Patentability Under § 112 ¶ 2 May Be Raised in CBM Patent Review - Chicago Mercantile Exchange, Inc. v. 5th Market, Inc.

The Patent Trial and Appeal Board (PTAB or Board) of the U.S. Patent and Trademark Office affirmed its earlier determination that a patent was a covered business method (CBM) patent that it was subject to review on questions...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

Joinder Denied: The Ins And Outs Of Filing And Joining IPR Petitions On A Timely Basis

For patent infringement defendants filing an Inter Partes Review (“IPR”) petition to challenge the validity of the patents asserted against them has become popular, largely because of the high rate of patents rendered invalid...more

Court Rules PTAB Decision to Institute AIA Review Is Final, Cannot be Appealed

In the first-ever ruling in an appeal of an American Invents Act review decision, the Federal Circuit Court of Appeals affirmed last week that a speed limit indicator patent is invalid. As an initial issue in the decision on...more

Claim Construction Deconstructed—Another Layer of Diverging Standards

The America Invents Act (AIA) implemented post-grant proceedings at the Patent Trial and Appeal Board (PTAB) as an alternative to litigation at district courts in the federal circuit. Since its institution, much focus has...more

Inter Partes Review Proceedings Continue to Be an Efficient and Effective Way to Address Patent Infringement Allegations in Light...

A recent court decision suggests that it may be even easier to invalidate patent claims via a relatively quick proceeding before the U.S. Patent and Trademark Office (“PTO”) – known as inter partes review (“IPR”) – as...more

IP Newsflash - February 2015

FEDERAL CIRCUIT CASES - PTAB’s Broadest Reasonable Interpretation Standard Affirmed by Fed. Circuit in First Ever IPR Appeal - On Wednesday, February 4, 2015, the Court of Appeals for the Federal Circuit (CAFC)...more

Federal Circuit Issues First Opinion From Appeal of an IPR Final Written Decision

On February 4, 2015, the Federal Circuit issued its long-awaited decision in In re Cuozzo Speed Technologies LLC, Case No. 2014-1301 (Feb. 4, 2015), which addresses several novel issues concerning the new AIA procedure for...more

Court of Appeals for the Federal Circuit Sides With PTAB in Inter Partes Review Appeal

In a decision imparting more certainty to the Post Grant Review process, the Court of Appeals for the Federal Circuit (the “CAFC”) held that it lacks jurisdiction to review the Patent and Trademark Office’s (the “PTO’s”)...more

Federal Circuit Sides with Patent Office in First IPR Final Written Decision Review

On February 4, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (“PTAB” or “Board”) first inter partes review (“IPR”) Final Written Decision. In fact, In re Cuozzo Speed Technologies, LLC. was the first appeal...more

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