In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These...more
5/9/2025
/ Apple ,
Claim Construction ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Stays
Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents. A...more
3/12/2025
/ Appeals ,
Claim Construction ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO ,
Wireless Industry ,
Wireless Technology
The U.S. Patent and Trademark Office (USPTO) recently released its Fiscal Year 2024 roundup for the Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) proceedings. This comprehensive report provides valuable...more
1/17/2025
/ America Invents Act ,
Corporate Counsel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Settlement ,
USPTO
The Patent Trial and Appeal Board (PTAB) in an inter partes review: Keysight Technologies, Inc. and Palo Alto Networks, Inc. v. Centripetal Networks, LLC found a rule set file used by a network security program to be a...more
On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues. The Notice addresses stakeholder feedback responsive to the...more
5/3/2024
/ Comment Period ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Ownership ,
Patents ,
Petition for Review ,
Post-Grant Review ,
Proposed Rules ,
Regulatory Agenda ,
Regulatory Reform ,
USPTO
The Patent Trial and Appeal Board (PTAB) in Videndum Production Solutions, Inc. v. Rotolight Limited (IPR2023-01219), recently denied a petition for inter partes review (IPR) of a patent on a lighting system and control for...more
Recently, the Court of Appeals for the Federal Circuit reversed one and vacated another Patent Trial and Appeal Board (“PTAB”) final written decision in which the PTAB determined that Weber Inc. (“Weber”) failed to...more
On November 16, 2023, USPTO Director Kathi Vidal ordered a Delegated Rehearing Panel (“DRP”) to review whether the PTAB misapprehended or overlooked certain issues when denying challenger SynAffix B.V.’s petition for inter...more
The Federal Circuit in Sisvel International S.A. v. Sierra Wireless, Inc. (Fed. Cir. Sept. 1, 2023) (Prost, Reyna, and Stark) affirmed a PTAB decision finding anticipated and/or obvious certain claims of two patents directed...more
10/31/2023
/ Claim Construction ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Standard of Review ,
Trial Practice Guidance
In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) the PTAB denied institution of an Inter Partes Review under 35 USC § 314. This denial was based on several factors including the declaration of the...more
In Zynga Inc. v. IGT, IPR2022-00199, the USPTO Director, Kathi Vidal, sua sponte granted review and affirmed the decision instituting trial over patent owner’s argument that the Board erred in its application of interference...more
In Salesforce.com, Inc. v. WSOU Investments, LLC d/b/a Brazos Licensing and Development, the Board denied institution of inter partes review of a patent directed to providing content to a limited display terminal (e.g., a...more
The Patent Trial and Appeal Board (PTAB) recently reversed obviousness rejections based on an Applicant demonstrating commercial success of an infant spoon, in Ex Parte Doug Gonterman and Jessica Lineberry. The PTAB found...more
6/21/2022
/ Commercial Success ,
Ex Parte ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Retail Market
The Federal Circuit, in Atlanta Gas Light Co. v. Bennett Regul. Guards, Inc., 21-1759, in an opinion by Judge STOLL, dismissed Atlanta Gas’s appeal for lack of jurisdiction. In this case, Atlanta Gas filed an IPR which was...more
On February 28, 2022, in American Well Corporation v. Teladoc Health, Inc. IPR2021-00748, the PTAB denied a motion to submit supplemental information. In this matter, the Board instituted a trial of all claims and all...more
On May 28, the Federal Circuit reversed a PTAB inter partes review (“IPR”) decision that held Baxter Corporation Englewood’s (“Baxter’s”) claims were not invalid under 35 U.S.C. § 103(a) obviousness based on three prior art...more
According to a recent district court opinion, a party may waive its right to assert infringement on claims that it voluntarily agrees to give up (e.g., by abandoning the claims). Such a waiver will be enforced as an equitable...more
On January 19, 2021, Petitioner, 10X Genomics, requested via email authorization to file 1) a five page brief addressing the Board’s institution decision in Samsung Electronics Co., Ltd. v. Acorn Semi, LLC, IPR2020-01204,...more
In a recently designated precedential decision, the Patent Trials and Appeals Board (“PTAB”) considered challenges to claims covering autonomous robotic cleaning devices. SharkNinja Operating LLC v. iRobot Corp.,...more
On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA). Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more
In Linksmart Wireless Tech., LLC v. Caesars Entm’t Corp., Case No. 2:18-cv-00862-MMD-NJK (D. Nev. May 8, 2020) the Court addressed disputed claim terms in U.S. Reissued Patent No. RE46,459 (the “’459 Patent”), Linksmart had...more
6/19/2020
/ Appeals ,
Claim Construction ,
Computer-Related Inventions ,
Doctrine of Prosecution Disclaimer ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Popular
As was previously noted, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more
In Think Prod., Inc. v. ACCO Brands Corp., No. 18-CV-07506, 2019 WL 6609427, at *1 (N.D. Ill. Dec. 5, 2019), the District Court addressed whether the plaintiff patent ower was collaterally estopped from arguing validity in...more
On November 21, 2017, Petitioner Infiltrator Water Technologies, LLC, filed a Petition for inter partes review (IPR) of claims 8–12 of U.S. Patent No. 8,815,094 B2. In its Preliminary Response, filed on March 7, 2018, Patent...more
The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination. This...more