Patent Trial and Appeal Board

News & Analysis as of

IP Newsflash - September 2014 #2

Airline Rewards Conversion Method Invalid Under Alice and Bilski - On September 2, 2014, Federal Circuit Judge William Bryson, sitting by designation in the Eastern District of Texas, ruled that two patents on a...more

PGR Report -- The Attack of 35 U.S.C. § 112

Last week, on September 2, 2014, Accord Healthcare, Inc. ("Accord") filed what appears to be the second-ever Post-Grant Review ("PGR") (see Petition). This PGR was for U.S. Patent No. 8,598,219 ("the '219 Patent"), which is...more

PTAB Threatens Sanctions for Unauthorized E-mails

Samsung Electronics Co., Ltd., et al. v. Black Hills Media, LLC - Addressing a patent owner’s unauthorized e-mail arguing for additional discovery and the petitioner’s likewise unauthorized responsive e-mail, an...more

No “Correct” Pronunciation for Trademarks that Are Unrecognized Words

StonCor Group, Inc. v. Specialty Coatings, Inc. - The U.S. Court of Appeals for the Federal Circuit, in affirming a Trademark Trial and Appeal Board (the Board) ruling finding no likelihood of confusion between the...more

Despite Lack of Familiarity with Specific Technology-at-Issue, Industry Expert Not Excluded

The Board continued its reluctance to exclude evidence in inter partes review proceedings in Primera Technology, Inc., v. Automatic Manufacturing Systems, Inc., Final Written Decision, IPR2013-00196 by denying a motion to...more

Patentee Owner Must Show a Nexus Between Alleged Commercial Success and the Claimed Technology

Vibrant Media, Inc. v. General Electric Co. - Addressing the issue of whether secondary considerations for non-obviousness showing commercial success of a system allegedly infringing a patent could rebut prima facie...more

Inherency Is Tough to Prove—Even in IPR

ZTE Corp. v. ContentGuard Holdings, Inc. - In four final written decisions in inter partes review (IPR) challenges, the Patent Trial and Appeal Board (PTAB) concluded that the petitioner had not demonstrated by a...more

The First Derivation Proceeding: Possession Not Enough: Need to Show Prior Conception of Claim Subject Matter

Catapult Innovations Pty Ltd v. Adidas AG - In denying institution for the first derivation petition considered on the merits, the Patent Trial and Appeal Board (the Board) found that the petition was fatally flawed in...more

Using the US Patent and Trademark Office to Neutralize Invalid Patents

How do you deal with a patent that may cover a product or service that you plan to make, use, sell, or import? What happens if one of your competitors controls that patent? Or if you receive a letter threatening a patent...more

High Bar for Discovery Motions in IPR

Permobil Inc. v. Pridemobility Products Corp. - Addressing a patent owner's motion to compel a petitioner to produce documents concerning petitioner’s alleged copying in an inter partes review (IPR), the U.S. Patent...more

PTAB Dismisses Argument That Priority Date is a § 112 Issue Not Reviewable in an IPR

In a decision instituting inter partes review, the PTAB rejected a patent owner’s argument that the priority date of the patent is not reviewable in an IPR because it’s an issue under 35 U.S.C. § 112. ...more

Board Consolidates IPR’s of Two Different (But Related) Patents

In FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, Paper 10 (September 5, 2014), the Board consolited two inter partes reviews directed to different but related patents. In IPR2014-00411 inter partes review was...more

The Heavy Burden of a Motion to Amend

LaRose Indus., LLC v. Capriola Corp. - Addressing issues of claim construction and the requirements of a motion to amend, the Patent Trial and Appeal Board (the Board) ordered the claims at issue were unpatentable and...more

Assignor Estoppel and Motion to Amend Claims Both Tough Sells in Inter Partes Review

Athena Automation Ltd. v. Husky Injection Molding Systems Ltd. - Addressing a patent owner’s request to dismiss an inter partes review (IPR) based on assignor estoppel and motion to amend the claims, the U. S. Patent...more

Patent Owner Bears Burden of Proving Proposed Claims Patentable

Harmonic, Inc. v. Avid Tech., Inc. - Addressing the patent owner’s burden of showing non-obviousness in an inter partes review (IPR), the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (PTAB, or...more

Late Addition of a Real-Party-in-Interest Allowed in Inter Partes Review

What if you come up short in naming all of the real-parties-in-interest to an inter partes review proceeding? Will the Board allow you to amend your petition? Four related IPR proceedings required the Board to address this...more

Kappos v. Hyatt Applies Broadly to Raising New Issues in District Court Actions

Troy v. Samson Mfg. Corp. - Addressing the scope of permissible new issues and evidence admissible in 35 U.S.C. § 146 district court proceedings, the U.S. Court of Appeals for the Federal Circuit vacated and remanded a...more

Voluminous Declaration Leads to PTAB Denial of IPR Petition

August 28, 2014 – In a decision of interest, the PTAB denied institution of inter partes review due to the Petitioner’s excessive reliance on a voluminous supporting declaration...more

PTAB Draws Line on Admissibility of Declaration Evidence in IPR

In a break from the PTAB’s trend of admitting evidence and allowing objections to admissibility to go to the weight of the evidence, the Board excluded testimonial evidence concerning the contents of documents that were not...more

IPR Update – Prosecution Bars

Are proceedings before the Patent Trial and Appeals Board ("PTAB") more like prosecution or more like litigation? This might appear to be a purely academic question, except for one significant issue -- litigation prosecution...more

PTAB Continues Hard Line on Motions for Additional Discovery, Door Left Open for Some Limited Discovery

August 28, 2014 – The PTAB continues to take a hard line on motions for additional discovery, but shows a willingness to grant some limited additional discovery, as the following four decisions illustrate...more

Immunizing Patent Portfolios Against “Infectious” Estoppel

Parties challenging patents under the post-issuance review proceedings authorized by the America Invents Act have long worried about estoppel in later district court cases if they lose before the Patent Trial and Appeal Board...more

Stay of Reexamination Premature Until IPR Initiated

In GoerTek, Inc. v. Knowles Electronics, LLC, IPR2014-01009, Paper 7, (August 29, 2014), the Board denied the patent owner’s motion to stay...more

Board Declines to Issue Final Written Decision without a Petitioner

In Xerox Corp. v. RR Donnelley & Sons Co., IPR2013-00529, Paper 21, IPR2013-00538, Paper 20 (August 29, 2014), the Board terminated the proceedings on the joint motion of the parties, declining the patent owners request that...more

Conclusory Declaration Testimony Again Leads to Unsuccessful IPR Petition

Some of the best inter partes review lessons can be learned from decisions denying institution of an inter partes review trial. Among the chief grounds for denying petitions, failure to provide competent expert testimony in...more

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