In Nanobebe US Inc. v. Mayborn (UK) Limited et al., the PTAB denied a Petitioner’s Motion to submit supplemental information, even though Petitioner argued the information had been inadvertently omitted in the original...more
In a recent decision denying institution, the PTAB rejected Petitioner Mercedes Benz USA’s argument that the challenged patent was not entitled to the filing date of its provisional application. Mercedes-Benz USA, LLC v....more
In MG Freesites Ltd v. Scorpcast, LLC, the PTAB recently denied a Petitioner’s request to file a Motion for Sanctions for alleged misconduct by the Patent Owner during depositions because the Petitioner did not raise the...more
On January 14, 2022, the PTAB issued a precedential opinion granting a request for rehearing of a denial of an IPR petition that had previously found a petition to be time-barred because the wire transfer had not been timely...more
1/27/2022
/ Filing Fees ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Regulatory Requirements ,
Time-Barred Claims ,
USPTO ,
Wire Transfers
In a recent decision, the Patent Trial and Appeal Board granted institution of inter partes review after accepting the Petitioner Microsoft’s stipulation to forego overlapping challenges in parallel district court proceedings...more
In the recent precedential Federal Circuit decision Valve Corporation v. Ironburg Inventions Ltd., No. 2020-1315, 2020-1315, 2020-1379, 2021 WL 3628664 (Fed. Cir. August 17, 2021), the Federal Circuit ruled on an issue that...more
The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with...more
An April 13, 2021 decision by the Federal Circuit denied a motion to vacate and remand PTAB decisions based on the Federal Circuit’s October 2019 decision in Arthrex v. Smith & Newman, Inc., et al., 941 F.3d 1320 (Fed. Cir....more
We recently wrote about the Federal Circuit’s 2020 decision in Donner Technology, LLC. v. Pro Stage Gear, LLC, where the Federal Circuit vacated the PTAB’s denial of an obviousness challenge due to its finding that the prior...more
A November 17, 2020 decision by the Federal Circuit has extended the Supreme Court’s April 2020 decision in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020), which held that institution decisions...more
12/11/2020
/ America Invents Act ,
Covered Business Method Patents ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
Real Party in Interest ,
Statutory Authority ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims
The Federal Circuit’s April 30, 2020 decision in Grit Energy Solutions, LLC v. Oren Technologies, LLC, No. 2019-1063, held that a former patent infringement defendant who had sold off the allegedly infringing product line and...more
On August 8, 2019, the Patent Trial Appeal Board held a Boardside Chat webinar to discuss the July 2019 changes to the AIA Trial Practice Guide. Vice Chief Administrative Judges Michael Tierney and Tim Fink led the discussion...more
8/13/2019
/ America Invents Act ,
Claim Construction ,
Final Written Decisions ,
Joinder ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Protective Orders ,
Trial Practice Guidance
The PTAB’s recent decision in TicketNetwork, Inc. v. CEATS, Inc. reminds litigants that collateral estoppel only applies when there is an identity of issues. In the decision, the PTAB refused to find that a claim limitation...more
In Cavium, LLC v. Alacritech, Inc., Case IPR2018-00401 (PTAB Nov. 20, 2018) (Paper 24), the PTAB granted a Patent Owner’s motion for additional discovery relating to real party-in-interest. The split-panel decision is...more
The Board recently exercised its discretion to terminate trial and obviate the Patent Owner’s pending Motion to Amend, after the Federal Circuit affirmed a district court’s ruling that all of the challenged claims were...more