Supplemental Examination: A Tool Worth Further Consideration - Patents: Post-Grant Podcast
Six Things You Should Know About Inter Partes Review
JONES DAY TALKS®: PTAB Litigation Blog Reaches 500 Posts ... and the PTAB Reacts to COVID-19
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Before Moore. Appeal from the Patent Trial and Appeal Board. Summary: Standing based on potential infringement liability requires concrete plans for future activity which will create a substantial risk of future infringement...more
The Federal Circuit recently vacated a PTAB decision that claims of an “e-cigarette” patent were unpatentable for lack of written description under 35 U.S.C. § 112. The question on appeal was whether a claimed range was...more
An en banc panel of the Federal Circuit recently heard arguments in a case that could change how courts assess design patents for “obviousness.” LKQ Corporation and GM Global Technology Operations LLC are engaged in a...more
The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s patentability determination, finding that the patent challenger waived an argument it attempted to incorporate by reference to another...more
Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
Kannuu Pty Ltd. v. Samsung Electronics Co., Appeal No. 2021-1638 (Fed. Cir. Oct. 7, 2021) - In our Case of the Week, the Federal Circuit addressed whether a forum selection clause in an NDA may prohibit a party from...more
Precedential Federal Circuit Opinions - In Re MAXPOWER SEMICONDUCTOR, INC. [ORDER] (2021-146, 9/8/21) (O’Malley, Reyna, Chen) - Reyna, J. Denying mandamus petition and dismissing appeal. The Court declined to...more
Whether you are pursuing patents on your new technology, thinking about bringing patent infringement litigation or defending patent infringement claims in court, knowing the important developments in patent law will help you...more
District courts commonly stay patent litigation cases pending inter parties review (IPR) that assesses the validity of the patents-in-suit before the Patent Trial and Appeal Board (PTAB). Such stay may be lifted or extended...more
The question of whether the United States Court of Appeals for the Federal Circuit Court of Appeals has any right to examine a decision of the Patent Trial and Appeal Board (PTAB) to institute inter partes review or post...more
As we demonstrated in our own successful appeal, Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. 2016), a petition for inter partes review (“IPR”) may fail when an expert declaration lacks detailed explanation. An expert’s...more
Next week is Court week. Readers may remember that, after the Court released the September calendar, we predicted that the submission trend would continue. Were we right? Sort of....more
On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more
Courts have a general policy prohibiting licensees from challenging patent validity (even though the licensee may have voluntarily agreed to forego challenges as a part of the negotiation). In Lear, Inc. v. Atkins, the...more
The America Invents Act (“AIA”), signed into law in 2011, introduced inter partes review (“IPR”), which allows parties to challenge the validity of patent claims in proceedings before the Patent Trial and Appeal Board...more
The Federal Circuit recently held a generic drug developer lacked Article III standing to appeal an adverse patentability determination by the Patent Trial and Appeal Board (PTAB) because it failed to prove that it suffered...more
Henny Penny petitioned for inter partes review (IPR) of Frymaster’s U.S. Patent 8,497,691. The ’691 patent relates to deep fryers and describes a system for measuring the state of cooking oil degradation with a “total polar...more
PERSONAL AUDIO, LLC v. CBS CORPORATION - Before Moore, Reyna, and Taranto. Appeal from the United States District Court for the Eastern District of Texas. Summary: The Federal Circuit has exclusive jurisdiction to hear...more
In BioDelivery Sciences Int’l v. Aquestive Therapeutics, Inc., the Federal Circuit confirmed that the PTAB has broad discretion to reconsider institution decisions and terminate instituted proceedings even after trial has...more
Again addressing the question of appellate standing for inter partes review (IPR) decisions, the US Court of Appeals for the Federal Circuit held that an IPR petitioner did not show a sufficient injury to confer Article III...more
The US Court of Appeals for the Federal Circuit addressed for the first time whether the retroactive application of inter partes review (IPR) proceedings to pre-America Invents Act (AIA) patents is an unconstitutional taking...more
PATENT CASE OF THE WEEK - BioDelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. Aug. 29, 2019) - Our case of the week this week focuses on Section 314(d)—the...more
One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more
Reasonably Continuous Diligence Is Not Negated If an Inventor Works On Improvements or Evaluates Alternatives to the Claimed Invention - In ATI Technologies ULC v. IANCU, Appeal Nos. 2016-2222, -2406, -2608, the Federal...more