Latest Posts › Inter Partes Review (IPR) Proceeding

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A New Vision: Collateral Estoppel Doesn’t Extend to Related Claims

The US Court of Appeals for the Federal Circuit reversed a district court order excluding expert validity testimony based on collateral estoppel stemming from an inter partes review (IPR) proceeding of a related patent,...more

Stud-y Harder: Domestic Industry Must Be Established for Each Asserted Patent

Addressing a final determination by the US International Trade Commission of no violation of § 337, the US Court of Appeals for the Federal Circuit affirmed that the complainant had not satisfied the economic prong of the...more

Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

Addressing a decision by the US Patent and Trademark Office’s Patent Trial and Appeal Board (Board) declining to find certain claims unpatentable because they contained means-plus-function elements without any corresponding...more

Rule Against Partial Institution of IPRs Can Mean No Institution at All

Addressing a Patent Trial and Appeal Board (PTAB) decision vacating an earlier partial institution of inter partes reviews (IPRs) in view of an intervening Supreme Court decision against such partial institutions, the US...more

No Competitor Standing for Appeal of IPR Decision Upholding Claims

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

No Competitor Standing for Appeal of IPR Decision Upholding Unasserted Claims

Addressing whether standing to appeal an unfavorable inter partes review (IPR) decision could be based on the competitor standing doctrine, the US Court of Appeals for the Federal Circuit held that the IPR petitioner did not...more

PTAB Refuses to Deny IPR Petitions Based on Parallel ITC Proceeding

Addressing an inter partes review (IPR) petition filed by respondents to an earlier-filed International Trade Commission (ITC) Section 337 investigation, the Patent Trial and Appeal Board (PTAB) declined to treat the petition...more

“Configured to” or “Capable of”: That Is the Question

Addressing Patent Trial and Appeal Board (PTAB) inter partes review (IPR) decisions finding some, but not all, challenged claims unpatentable, the US Court of Appeals for the Federal Circuit affirmed the PTAB’s determination...more

Cat on a Hot Asphalt Roof? PTAB’s BRI Is Too Narrow

Addressing a Patent Trial and Appeal Board (PTAB or Board) decision upholding patentability of the challenged claims in an inter partes review, the US Court of Appeals for the Federal Circuit rejected the PTAB’s broadest...more

Broadest Reasonable Interpretation Is Not Broadest Possible Interpretation

Addressing an unpatentability decision of the Patent Trial and Appeal Board (PTAB or Board) that turned on claim construction, the US Court of Appeals for the Federal Circuit explained that the broadest reasonable...more

Patent Holders Can Evade CBM by Disclaiming CBM Claims

Addressing petitioner’s urging that the Patent Trial and Appeal Board (PTAB) import the district court “time of filing” rule to institution decisions for covered business method (CBM) reviews, the PTAB once again held that...more

Third Time’s Not the Charm for IPR Petitioner Adding Known References to Previously Rejected Prior Art Combination

Addressing whether to institute an inter partes review (IPR) based on a third petition by the same petitioner against the same patent claims, the Patent Trial and Appeal Board (PTAB or Board) denied institution both as an...more

Generalized Common Sense Allegations Cannot Be Used to Supply Important Missing Claim Limitation

Addressing the use of common sense for an obviousness analysis, the US Court of Appeals for the Federal Circuit held that conclusory statements about common sense cannot be used to supply missing claim limitations that play a...more

Motion to Amend in IPR Must Establish Patentability Over Prior Art from Original Prosecution - Prolitec, Inc. v. ScentAir...

Addressing whether a patentee must show that proposed claim amendments in an inter partes review (IPR) overcome not only the prior art in the IPR but also the prior art from the original prosecution, the U.S. Court of Appeals...more

PTAB Grants Patent Owner Request for Surreply to Defend Reduction to Practice Claim - HTC Corp. v. NFC Technology, LLC

Addressing whether a patent owner may file a surreply brief in an inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB or Board) granted the request, but limited the size of the surreply and the scope...more

PTO Refusal to Terminate Ongoing Proceeding Is Not Immediately Reviewable - Automated Merchandising Systems, Inc. v. Lee

Addressing the U.S. Patent and Trademark Office’s (PTO’s) refusal to terminate four inter partes reexaminations after a corresponding district court action was terminated, the U.S. Court of Appeals for the Federal Circuit...more

Prior Art Must Criticize or Otherwise Disparage the Claimed Solution to Constitute a Teaching Away - PNY Techs., Inc., v. Phison...

Addressing the question of whether claims covering a particular type of USB plug would have been obvious, the Patent Trial and Appeal Board (PTAB or Board) found the claims to be unpatentable, concluding that while one...more

Would Have Been Obvious to Combine Prior Art that Mentions an Object with Standard Textbook that Describes that Object - Intel...

Addressing the merits in an inter partes review of a patent for improved computer graphics calculations, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (Board) found all challenged claims unpatentable. ...more

Draft Available Only as a Password-Protected Download Is Not a Printed Publication - Samsung Electronics Co. Ltd. v. Rembrandt...

Addressing a petition to institute an inter partes review of a patent for communicating between different modem types, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) declined to institute...more

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