In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more
On February 28, 2025, the USPTO announced that it was rescinding former Director Vidal’s 2022 memorandum on discretionary denials by the Patent Trial and Appeal Board. The 2022 memorandum effectively narrowed the application...more
In a sua sponte review, USPTO Director Kathy Vidal continued her refinement of the PTAB’s “discretionary denial” practice. Specifically, the Director vacated the Board’s decision to deny institution in Volvo Penta of the...more
Inter partes review (IPR) proceedings can give rise to statutory and collateral estoppel. But these two bases for estoppel attach at different times, which can lead to asymmetrical outcomes in related district court...more
In the last two years, the Patent Trial and Appeal Board has issued two precedential decisions (in NHK and Fintiv) that set forth the board’s test for determining whether to deny an inter partes review (IPR) petition based on...more
12/23/2020
/ §314(a) ,
Claim Construction ,
Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Trial Practice Guidance
In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness challenge by relying on evidence from an earlier litigation to establish objective indicia of nonobviousness.
In RTI...more
The Federal Circuit’s decision in Shaw Indus. Grp., Inc. v. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016) raised the possibility that the inter partes review (IPR) estoppel of 35 U.S.C. § 315(e) might not do much...more
SUPREME COURT CASES -
U.S. Supreme Court Will Review PTAB’s Claim Construction Standard -
The U.S. Supreme Court has decided to review the claim construction standard used by the Patent Trial and Appeal Board (PTAB)...more
SUPREME AND FEDERAL COURT CASES -
U.S. Supreme Court Denies Writ to Overturn Application of the Kessler Doctrine -
The U.S. Supreme Court denied software developer’s SpeedTrack writ to overturn the Federal...more
1/18/2016
/ America Invents Act ,
Apple ,
Claim Construction ,
CLS Bank v Alice Corp ,
Inter Partes Review (IPR) Proceeding ,
JMOL ,
Kessler Doctrine ,
Office Depot ,
Patent Infringement ,
Patent Invalidity ,
Prior Art ,
SCOTUS ,
Software ,
VoIP ,
Wal-Mart
FEDERAL CIRCUIT CASES -
PTAB’s Broadest Reasonable Interpretation Standard Affirmed by Fed. Circuit in First Ever IPR Appeal -
On Wednesday, February 4, 2015, the Court of Appeals for the Federal Circuit (CAFC)...more
2/9/2015
/ Appeals ,
Broadest Reasonable Interpretation Standard ,
CAFC ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Cuozzo Speed Technologies ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Trademarks
FEDERAL CIRCUIT CASES -
Akin Gump Wins Summary Judgment of Non-Infringement -
Akin Gump obtained a significant victory on summary judgment for HTC and AT&T in a patent infringement case against Adaptix, Inc., an...more
1/26/2015
/ Apple ,
AT&T ,
Claim Construction ,
HTC ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Summary Judgment ,
Teva v Sandoz ,
Verizon