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
After the Supreme Court’s 2019 decision in Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019), held that federal agencies are not “persons” eligible to challenge a patent at the PTAB, the government was...more
3/4/2020
/ Administrative Agencies ,
America Invents Act ,
Covered Business Method Proceedings ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Real Party in Interest ,
Return Mail Inc v United States Postal Service ,
SCOTUS
The Patent Trial and Appeal Board held a Boardside Chat on October 10, 2019, discussing the various recent changes made to PTAB procedures. The panel discussion featured Chief Judge Scott Boalick, Deputy Chief Judge Jackie...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
35 U.S.C. § 315(d) and 37 C.F.R. 42.122(a) vest the PTAB with the power to stay, transfer, consolidate, or terminate any matter pending before the U.S. Patent and Trademark Office while an inter partes review involving the...more
In XY, LLC v. Trans Ova Genetics, L.C., Nos. 2016-2054, 2016-2136 (Fed. Cir. May 23, 2018), an appeal from the District of Colorado, the Federal Circuit gave preclusive effect to a PTAB finding, something it has done several...more
5/31/2018
/ Appeals ,
Collateral Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Patent Infringement ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Standard of Review ,
Sua Sponte
In a January 12 article, Anticipation Requires More Than A Reference That Discloses All The Elements, we discussed the Microsoft Corp v. Biscotti, Inc. case, where the Federal Circuit affirmed a decision of the PTAB finding...more
In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007), the Supreme Court stated that “common sense” can be considered in reaching a conclusion that a claimed invention is obvious. Since then, both litigants and patent...more
The PTAB’s recent final written decision denying a finding of unpatentability in ABS Global, Inc. v. Inguran, LLC, Case IPR2016-00927, Paper 33 (PTAB Oct. 2, 2017) highlights the importance of obtaining affidavit evidence to...more
10/5/2017
/ Affidavits ,
Burden of Proof ,
Copyright ,
Evidence ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Prior Art
In a series of related decisions issued in April 2017, the PTAB exercised its discretion under 35 U.S.C. § 314(a) and 37 C.F.R. § 42.108(a) to deny institution of inter partes review petitions filed by Xactware Solutions,...more