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Patents Patent Owner Preliminary Response

Jones Day

Petitioner Prevails In Institution Decision Do-Over After Director Steps In

Jones Day on

On November 6, 2023, the PTAB issued an decision instituting inter partes review of U.S. Patent No. 10,681,009 B2 (“the ’009 patent”) in Keysight Technologies, Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 16 (PTAB...more

Jones Day

Federal Circuit Confirms PTAB Standard of Review

Jones Day on

The Federal Circuit in Sisvel International S.A. v. Sierra Wireless, Inc. (Fed. Cir. Sept. 1, 2023) (Prost, Reyna, and Stark) affirmed a PTAB decision finding anticipated and/or obvious certain claims of two patents directed...more

Axinn, Veltrop & Harkrider LLP

Is It In or Is It Out?

Whether an argument raised in a Petitioner Reply falls within the scope of permissible arguments following a Patent Owner Response (POR) in IPR proceedings is a frequent source of dispute. As Axinn reported back in August,...more

Jones Day

Board Denies Follow-On Petition

Jones Day on

In recent decision 3M Company v. Bay Materials, the Board denied 3M Company’s (“Petitioner”) second Petition for inter partes review (“Second Petition”) after exercising its discretion under § 314(a) and finding that each of...more

Axinn, Veltrop & Harkrider LLP

Thought Leadership - Axinn IP Update: Federal Circuit Clarifies Permissible Scope of Petitioner Reply

The Federal Circuit issued two precedential decisions in August, reminding parties in Inter Partes Review (IPR) proceedings to refrain from sandbagging and raise all arguments at the first opportunity. In Axonics v....more

McDermott Will & Emery

Sliced and Diced: PTAB Decision Remanded for Further Analysis

McDermott Will & Emery on

In an appeal from a Patent Trial & Appeal Board final written decision, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision to include certain evidence first presented in the petitioner’s Reply but...more

McDermott Will & Emery

It Can Take Three Appeals to Make a Claim Construction Go “Right”—or Three Bites by Apple

McDermott Will & Emery on

In a nonprecedential opinion on remand from the US Court of Appeals for the Federal Circuit and a US Patent & Trademark Office (PTO) Director-granted request for review, the Patent Trial & Appeal Board (Board) reconstrued...more

Rothwell, Figg, Ernst & Manbeck, P.C.

PTAB to Review Two Eylea® (aflibercept) Patents After Granting Mylan’s Challenges

The U.S. Patent and Trademark Office (USPTO) recently instituted two of Mylan’s petitions seeking Inter Partes Review of Regeneron’s U.S. Patent No. 9,669,069 B2 (the “’069 Patent,” subject of IPR2021-00880) and U.S....more

Caldwell

Success Stories for a Patent Owner at the Patent Trials and Appeal Board (PTAB): Denial of Inter Partes Review Institution

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Rights and Challenges Is owning a patent enough? Even with the rights granted to an individual to protect their patents, the infringement process allows a defendant tools to counter and invalidate the patent owner’s...more

Jones Day

Introducing Evidence Before Authorization May Result in Expungement

Jones Day on

Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement. A recent motion met such a fate in Ice Castles, LLC v....more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #18 for Surviving an Instituted IPR: Defending Depositions

In our penultimate patent owner tip for surviving an instituted IPR, we turn our discussion to defending the deposition of your expert. At this stage of the proceeding, your Patent Owner Response has been filed, and all the...more

Sunstein LLP

A Procedural Bias Favors Patent Owners in IPRs

Sunstein LLP on

Many have argued that the PTAB is biased against patent owners, but one has to wonder whether they are taking into account the procedural benefits afforded to patent owners. As Intel experienced in its recent IPR, a...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #12 for Surviving an Instituted IPR: Address Individual Claims – Dependent Claims Can Save the Day

In inter partes review (IPR) proceedings, the PTAB will often uphold the validity of dependent claims despite finding the independent claim invalid. Dependent claims recite additional limitations that must be separately...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #11 for Surviving an Instituted IPR: Use It or Lose It (in the POR)

When faced with an instituted IPR, the Patent Owner should include all arguments it wishes to preserve for appeal in its Patent Owner Response (“POR”), including arguments that the Patent Owner believes are unlikely to...more

Troutman Pepper

IPR Institution and Early Intervention - Patents: Post-Grant Podcast

Troutman Pepper on

Please join Troutman Pepper’s Intellectual Property and Health Sciences Groups for the first installment of its podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper Partner Maia...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #4 For Surviving An Instituted IPR: Take the Time to Use Your Expert as an Expert

The expert declaration provides a unique opportunity for Patent Owners to bolster their case during the discovery period of an inter partes review (“IPR”) proceeding. We previously detailed how to effectively use an expert...more

Mintz - Intellectual Property Viewpoints

Patent Owner Tip #3 for Surviving An Instituted IPR: How Patent Owner Experts Go from Zero to Hero

Drafting the expert declaration is another critical task for Patent Owners during the inter partes review (“IPR”) discovery period. As noted in our previous post, IPR expert witnesses provide declarations as affirmative...more

Perkins Coie

What Qualifies as a Good "Good Cause" when Responding to Patent Owners’ Preliminary Responses

Perkins Coie on

When the patent owner files a patent owner’s preliminary response (POPR) to an inter partes review petition, the petitioner can request leave to reply before the Board issues its institution decision. Such requests must...more

Jones Day

Follow-On Petitions Must Be Justified and Timely

Jones Day on

The PTAB recently held that the General Plastic factors weighed in favor of denying a follow-on IPR petition filed after the Patent Owner filed a preliminary response to an earlier petition challenging the same patent (U.S....more

Jones Day

Request for Second Fintiv Preliminary Reply Denied

Jones Day on

On January 19, 2021, Petitioner, 10X Genomics, requested via email authorization to file 1) a five page brief addressing the Board’s institution decision in Samsung Electronics Co., Ltd. v. Acorn Semi, LLC, IPR2020-01204,...more

Womble Bond Dickinson

Proposed Novel PTAB Discretionary Denial Analysis in View of Parallel Petitions

Womble Bond Dickinson on

The authors have recently proposed alternative analyses for the discretionary denial of IPR and PGR petitions involved in parallel district court litigation, as well as for the discretionary denial of serial petitions filed...more

Jones Day

BREAKING: PTAB Publishes Final Rule Package

Jones Day on

On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference...more

Mintz - Intellectual Property Viewpoints

Tip #6 for Avoiding IPR Institution: Advocate Claim Constructions the Petition Ignored

Arguing against material constructions proffered by an IPR petition is a basic building block of the patent owner’s preliminary response. Obviously, patent owners must investigate and advocate for claim constructions for...more

Mintz - Intellectual Property Viewpoints

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing...more

Mintz - Intellectual Property Viewpoints

Tip #2 for Avoiding IPR Institution: Focus on a few arguments that will affect all challenged claims

If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial. But that...more

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