The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not...more
The Federal Circuit dismissed an appeal from an inter partes review (“IPR”) final written decision for lack of standing where it found the appellant failed to provide evidence sufficient to show it suffered an injury in fact....more
The Patent Trial and Appeal Board denied institution of a petition for inter partes review under 35 U.S.C. § 315(b) because the petition was filed more than one year after patent owner had served a complaint for patent...more
The Patent Trial and Appeal Board has denied institution and joinder of an inter partes review petition after determining that the petition was not only time-barred but that joinder was also foreclosed. In making its...more
The USPTO Director vacated a Patent Trial and Appeal Board decision denying institution of inter partes review for not addressing alleged differences between references in the petition and those considered during prosecution....more
The Patent Trial and Appeal Board has denied a patent owner’s motion to terminate an inter partes review proceeding finding that the unidirectional nature of estoppel under 35 U.S.C. § 315(e) renders common-law claim...more
In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes...more
The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the...more
Petitioners moved for an order requiring Patent Owner to produce discovery comprising Final Infringement Contentions from related district court litigations between the parties. Petitioners set forth two independent bases...more
In a recent order, the Eastern District of Texas declined to preclude a defendant from raising prior art system references despite patentee’s argument that similar printed publications could have been raised in earlier inter...more
Objective evidence of nonobviousness traces its roots to 19th century case law from the U.S. Supreme Court.
The analysis of such secondary considerations as commercial success, failure of others, and long-felt but...more
On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more
8/20/2019
/ Appeals ,
Burden of Proof ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Remand ,
Vacated
In Ruiz Food Products, Inc. v. MacroPoint LLC, the Patent Trial and Appeal Board (PTAB) considered whether the time-bar provision of 35 U.S.C. § 315(a)(1) was triggered when a real party-in-interest had previously filed an...more
3/1/2019
/ Counterclaims ,
Declaratory Judgments ,
Dismissals ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prejudice ,
Real Party in Interest ,
Subject Matter Jurisdiction ,
Time-Barred Claims
On September 22, 2017, the United States Patent Trial and Appeal Board (PTAB) issued a final written decision regarding claims directed to a switching regulator comprising a power switch and a control circuit. The PTAB found...more
10/9/2017
/ Federal Rules of Evidence ,
Final Written Decisions ,
Hearsay ,
Inter Partes Review (IPR) Proceeding ,
Motion to Exclude ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 103 ,
Semiconductors ,
Testimony
Last year, the Federal Circuit in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc. articulated that a petitioner is not estopped from relying on a ground on which the Patent Trial and Appeal Board (PTAB) declined...more
On January 30, 2017, the Patent Trial and Appeal Board (PTAB or “the Board”) granted in part the petitioner’s motion to strike various declarations of a named inventor because the patent owner failed to make him available for...more