On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more
7/19/2019
/ Additional Discovery ,
America Invents Act ,
Covered Business Method Patents ,
Garmin Factors ,
Guidance Update ,
Inter Partes Review (IPR) Proceeding ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Prior Art ,
Trial Practice Guidance ,
USPTO
For many practitioners, it seems that change is the only certainty at the Patent Trial and Appeal Board. And only five months into the year, change in 2019 has become more certain than ever.
Late last year, the PTAB...more
On April 18, 2019, the Federal Circuit issued a non-precedential opinion that is making stakeholders in the patent licensing community sit up and take note. The case was Dodocase VR, Inc. v. MerchSource, LLC, holding that a...more
Federal Circuit Summaries -
Before Newman, O’Malley, and Reyna. Appeal from the Patent Trial and Appeal Board.
Summary: Anticipation is not proven by multiple, distinct teachings in a single prior art document that a...more
12/29/2017
/ Anticipation ,
Anticipatory Reference ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Reaffirmation ,
Standard of Review ,
Substantial Evidence Standard
The Federal Circuit held that the PTAB may consider legal conclusions of obviousness by experts, but the expert papers must make adequate factual findings and provide a satisfactory explanation as to determinations of...more
PTAB’s Institution Decision Remains Largely Unreviewable -
What You Need To Know -
Summary -
In its first case addressing an Inter Partes Review (“IPR”), the Supreme Court’s In re Cuozzo decision unanimously...more
6/21/2016
/ America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Cuozzo Speed Technologies v Lee ,
Final Judgment ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Trial and Appeal Board ,
SCOTUS ,
Standard of Review ,
USPTO
The Patent Trial and Appeal Board recently designated a decision granting a request for additional discovery as an informative opinion. Informative opinions are not binding; they rather provide guidance on rules and...more
Dell, Inc. v. Electronics & Telecommunications Research Institute, IPR2015-00549, Paper 10 (P.T.A.B. Mar. 26, 2015) -
The Board recently added a decision denying inter partes review in Dell, Inc. v. Electronics &...more
The Board recently added an order in Corning Optical Communications RF, LLC v. PPC Broadband, Inc., IPR2014-00441, to its list of Representative Decisions on Motion to Amend on the Board’s web site. The decision outlines in...more
In July 2013, Cardiocom filed a petition for IPR of a patent. Petitioner Medtronic then acquired Cardiocom. In January 2014, the Board decided to move forward on eight claims and declared trial on two obviousness grounds,...more
Petitioner Unilever filed an earlier petition for IPR of 33 claims of a patent. In the Decision on Institution, the Board denied review of 11 claims and granted review of the rest. Unilever then filed a second petition for...more
In January 2013, Petitioner IBS filed a petition for IPR. Five months later, IBS filed a second petition for IPR on the same patent claims. The follow-on petition relied on art from the first petition and other prior art,...more
Petitioner Metronic had previously filed two other petitions for IPR of a patent. The Board instituted trial on one of the petitions and denied the other. Medtronic then filed a third petition for IPR of the patent that...more
Petitioner Unified filed a petition for IPR of 11 claims of a patent. Unified acknowledged that the patent was already subject to three other petitions for IPR and that the Board had instituted trial on two of those three...more
In this inter partes review proceeding, the challenged patent, filed in July 2011, purported to be a continuation of a parent application filed in September 2009. Petitioner PRISM argued the challenged claims lacked written...more