Patent Trial and Appeal Board

News & Analysis as of

Trademark Trial and Appeal Board Sustains Opposition on the Basis of Fraud

Nationstar Mortgage LLC v. Mujahid Ahmad - The United States Patent and Trademark Office (USPTO) Trademark Trial and Appeal Board (TTAB or Board) sustained an opposition on the basis of fraud, finding that Ahmad’s...more

Patent Owner Must Prove Patentability of Proposed Amended Claims (Including Prior Art Date)

Neste Oil Oyj v. REG Synthetic Fuels, LLC - In an order addressing a motion for a sur-reply to introduce evidence to antedate a prior art reference in an inter partes review (IPR) proceeding, the U.S. Patent and...more

PTAB Denies Motion to Amend for Failure to Show Patentability

Reg Synthetic Fuels, LLC v. Neste Oil Oyj - Addressing a patent owner’s motion to amend by cancelling claims and substituting claims, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board)...more

Inter-Partes Review of Patents: The Case So Far (CLE) [Video]

Many companies feel defenseless against threats of patent litigation. IPRs offer a way to go on the offense to challenge patents. In this presentation, Rimon Partner, John Hintz, compares the traditional options available...more

IPR Petition Time-Barred Even Where First Lawsuit “Dismissed” and Folded Into Later Lawsuit

The PTAB has been presented, of late, several cases that call upon the Board to consider whether a complaint served on a defendant is sufficient to trigger the a time-bar pursuant to 35 U.S.C. § 315(b)....more

Federal Circuit Weighs in on Stay in View of Covered Business Method Review

The first few decisions from the Federal Circuit are starting to trickle in and are sure to bring more upheaval to Patent Office post-grant procedures. In Versata Software, Inc., et al. v. Callidus Software, Inc., the Court...more

PTAB Holds a Firm Line on Additional Discovery

When Congress created the Inter Partes Review (“IPR”) and Covered Business Method (“CBM”) review procedures for challenging the validity of an issued patent, it was intended for these processes to be quicker and more...more

Proving Real-Party-In-Interest in IPR Remains Elusive

On difficult-to-prove issues in IPR proceedings, it is interesting to watch parties adapt to PTAB decisions, in the hopes of overcoming the long odds of success. One such issue is proving that a third party, whose involvement...more

IP News You Need to Know - November 2014

In This Presentation: - USPTO POST-GRANT PROCEEDINGS: LESSONS LEARNED AFTER 2 YEARS - Rationales for Denial of Petition - Rationales for Claims Surviving Final Decision - Considerations for Multi-Forum...more

Inventor Testimony Without Corroborating Evidence Is Insufficient to Prove of Reduction to Practice

K-40 Electronics, LLC v. Escort, Inc. - Addressing the sufficiency of corroborating evidence to prove earlier reduction to practice, the Patent Trial and Appeal Board (PTAB) found that an inventor’s testimony regarding...more

PTAB Does Not Rely on District Court’s Markman Decision in Construing Claim Terms

SAP America, Inc. v. Arunachalam - Addressing allegations of impropriety of district court judges that purportedly led to a “tainted” claim construction ruling, the U.S. Patent and Trademark Office’s Patent Trial and...more

PTAB Adopts Broad View of Inherency Doctrine

Ariosa Diagnostics v. Isis Innovation Ltd. - Addressing a variety of issues in a recent inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) determined that...more

PTAB Orders Halt to “Speaking” Objections in Deposition

The Board continues to strongly enforce its regulations regarding the behavior of attorneys defending depositions in inter partes review proceedings. In an order entered in both Medtronic, Inc., Medtronic Vascular, Inc., and...more

Inter Partes Review: Lessons Learned and Emerging Trends

Introduced by the America Invents Act (AIA), Inter Partes Review (IPR) first became available on September 16, 2012. “IPRs have really taken off and filings have increased over time as more and more people consider how useful...more

Parties Must “Meet and Confer” Before Requesting Conference Call

Metrics, Inc. v. Senju Pharmaceutical Co., Ltd. - In an order involving two related inter partes reviews (IPRs), the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or the Board) denied a patent...more

Timeliness – The Devil Is in the Details (a.k.a. Rules)

GEA Process Engineering, Inc. v. Steuben Foods, Inc. - In an order issued by the Patent Trial and Appeal Board (PTAB or Board), the Board expunged exhibits from the records of five related cases on the basis of...more

PTAB Reiterates Prohibition Against New Arguments at IPR Oral Hearing

One of the most litigated aspects of inter partes review proceedings is the issue of whether an argument presented in a petitioner reply or at oral hearing is “new.” This issue arose in Level 3 Communications, LLC v. AIP...more

Specificity and Negotiation Are the Buzz Words for IPR Discovery

Square, Inc. v. REM Holdings 3, LLC - Addressing a patent owner’s request for additional discovery, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) denied the patent owner’s request and...more

Choose Your Battles Before the PTAB – 49 Basis Is Just Too Many!

Canon Inc. v. Intellectual Ventures I LLC - In a combined decision of three inter partes review (IPR) proceedings issued by the Patent Trial and Appeal Board (PTAB or Board), the Board declined institution inter partes...more

Copyright Notice on Prior Art Establishes Priority Date in IPR

The PTAB weighed in on whether a copyright notice can be sufficient to demonstrate the priority date of a printed publication in FLIR Systems, Inc. v. Leak Surveys, Inc., IPR2014-00411, -434, -608, and -609. In Flir,...more

Supreme Court Told That TTAB Preclusion Raises Constitutional Concerns

As reported in our September 23 Client Alert, the Supreme Court is set to hear argument on December 2 on the issue of whether likelihood of confusion findings by the Trademark Trial and Appeal Board (TTAB) are entitled to...more

Too Much Incorporation By Reference Dooms IPR Petition

Cisco Systems, Inc. v. C-Cation Technologies, LLC - In a decision issued by the Patent Trial and Appeal Board (PTAB or Board), the Board denied institution of inter partes review (IPR) of several challenged claims of...more

Tips for Writing Effective PTAB Appeals Briefs

Your patent application has been rejected – again. You are ready to file an appeal brief with the Patent Trial and Appeal Board (PTAB) and tell three Administrative Patent Judges that the examiner is wrong. ...more

Method Implemented on Generic Computers Is Not Patent Eligible, but Method for Processing Paper Checks Is

Salesforce.com, Inc. v. Virtualagility, Inc. and U.S. Bancorp v. Solutrain, Inc. - In a pair of covered business method (CBM) decisions, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or...more

PTAB Clarifies its Stances on § 315 on the Way to the Federal Circuit

In an apparent attempt to better explain itself prior to Federal Circuit appeal, the PTAB reiterated and further clarified its decision in Ariosa Diagnostics v. Isis Innovations, IPR2012-00022 regarding three sections of 35...more

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