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
The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more
Key Points -
On June 21, 2022, USPTO Director Katherine K. Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.”
Under...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
A Central District of California judge recently granted summary judgment of no obviousness based on inter partes review (IPR) estoppel because the only prior art references used to challenge patent validity could have been...more
1/31/2020
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Validity ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
Chief Judge Rodney Gilstrap of the Eastern District of Texas issued a decision addressing motions to stay a patent infringement case under the “customer-suit exception” to the general first-to-file rule. Judge Gilstrap...more
FEDERAL CIRCUIT CASES -
Federal Circuit Declines to Extend Patent Exhaustion Doctrine -
In a February 10, 2015 decision, the Federal Circuit reversed a grant of summary judgment of non-infringement under the...more
2/16/2015
/ Covered Business Method Patents ,
Discovery ,
Innovation Act ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Mobile Devices ,
New York Times ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patent Reform ,
Patent Trial and Appeal Board ,
Patents
Federal Circuit Affirms Inequitable Conduct Based On “Intentionally Selective” Disclosure -
On September 26, 2014, a divided Federal Circuit panel affirmed the unenforceability of three American Calcar patents,...more
10/6/2014
/ Expert Testimony ,
Inequitable Conduct ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Joinder ,
Microsoft ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Target