On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment,...more
On October 27, 2023, Inergy Technology, Inc. (“Inergy”) filed concurrent petitions for inter partes review (“IPR”) of U.S. Patent Nos. 7,629,634 (“the ’634 Patent”) (“IPR093”) and 7,812,409 (“the ’409 Patent”) (“IPR094”),...more
On March 7, 2024, the PTAB denied institution in 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024) (“Decision”). The PTAB denied institution on two separate grounds:...more
On February 20, 2024, the Supreme Court denied Liquidia Technologies’ petition for a writ of certiorari to review a precedential Federal Circuit decision, United Therapeutics Corp. v. Liquidia Techs., Inc., 74 F.4th 1360...more
Director Vidal recently issued sanctions against OpenSky Industries (“OpenSky”) for attempted extortion during settlement negotiations and abuse of the IPR process for US Patent 7,725,759 and awarded $413,264.15 to VLSI...more
2/26/2024
/ Attorney's Fees ,
Expert Testimony ,
Extortion ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Sanctions ,
Settlement Negotiations
On January 5, 2023, President Biden signed the Protecting American Intellectual Property Act of 2022 (“PAIPA”) into law. PAIPA requires that the President submit an annual report identifying and describing any “significant...more
On March 31, 2023, Zhuhai CosMX Battery Co., Ltd. (“Zhuhai”) filed a petition for inter partes review (“IPR”) of claims of U.S. Patent No. 11,329,352 (“the ’352 Patent”), assigned to Ningde Amperex Technology Ltd....more
In a precedential opinion, the Federal Circuit affirmed two Patent Trial and Appeal Board (“PTAB”) patentability decisions, holding that the PTAB did not abuse its discretion by not addressing arguments not clearly presented...more
In February 2023, T-Mobile USA, Inc. (“T-Mobile”) filed petitions requesting four inter partes reviews (“the T-Mobile IPRs”)—two of which challenged U.S. Patent No. 8,630,234 and two of which challenged U.S. Patent No....more
On June 2, 2023,the PTAB held the standard enunciated in Astoria Federal Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) applies to claim preclusion determinations. This was yet another decision in the ongoing battle...more
7/21/2023
/ America Invents Act ,
Appeals ,
Claim Preclusion ,
Final Judgment ,
Intel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents
Director Vidal recently vacated a decision denying institution of an inter partes review (“IPR”) to allow Google, the Petitioner, to brief whether discretionary denial was warranted under Section 325(d) in view of a European...more
On September 1, 2022, CommScope, Inc. (“CommScope”) filed a Petition for inter partes review (“IPR”) of claims 8–10, 15, 24–26, and 31 of U.S. Patent No. 8,462,835 (“the ’835 Patent”) in IPR2022-01443 (“the ’443 IPR”). The...more
U.S. Patent No. 9,157,017 (“the ’017 Patent”) is assigned to Honeywell International Inc. (“Honeywell”) and is titled, “Compositions Containing Fluorine Substituted Olefins and Methods and Systems Using Same.” The detailed...more
On June 21, USPTO Director Kathi Vidal issued a memorandum concerning the PTAB’s practice of determining whether to institute an AIA post-grant proceeding in view of the Fintiv factors. The memorandum is in part a result of...more
7/15/2022
/ America Invents Act ,
Discretionary Functions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Investigations ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
USPTO
Willis Electric Co., Ltd. (“Willis Electric”) owns U.S. Patent No. 10,222,037 (the “’037 Patent”), titled “Decorative lighting with reinforced wiring.” The ’037 Patent claims a decorative lighting design involving a strand...more
In November 2020, Google LLC filed two petitions requesting an inter partes review of the claims of Ikorongo Technology LLC (“Ikorongo”) owned U.S. Patent No. 8,874,554 (“the ’554 patent”)....more
2/16/2022
/ Denial of Institution ,
Google ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
LG Electronics ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Samsung
Recently, Cloudflare Inc. succeeded in convincing the PTAB to institute in IPR2021-00969 against a Sable Network, Inc.’s patent directed toward data flow. While the institution itself is not out of the ordinary—the...more
12/8/2021
/ Crowdsourcing ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Portfolios ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
President Biden has selected Leonard P. Stark—Chief Judge of the U.S. District Court for the District of Delaware—to be the next member of the Federal Circuit, filling the vacancy that will be left behind when Judge Kathleen...more
In Apple, Inc. v. Parus Holdings, Inc. (IPR2020-00686), the PTAB denied the Patent Owner’s motion to exclude portions of the Petitioner’s supplemental expert declaration. Here the Patent Owner sought to exclude a number of...more
This is a follow up to our earlier post about the fallout from the Supreme Court’s June 21, 2021 decision in U.S. v. Arthrex, holding that PTAB APJs were unconstitutionally appointed because they exercised “principal...more
8/11/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
On June 21, 2021, the Supreme Court issued a decision in U.S. v. Arthrex, holding that PTAB APJs were unconstitutionally appointed because they exercised “principal officer” authority in their final written decisions,...more
7/20/2021
Discovery in an IPR proceeding is limited compared to district court litigation in order to focus the proceedings and promote speed and efficiency. The PTAB Practice Guide and 37 C.F.R 42.51 provide for three types of...more
In Mylan Labs Ltd. v. Janssen Pharmaceutica N.V., the Federal Circuit reaffirmed it lacked jurisdiction over appeals from the PTAB denying IPR institution, noted that it had jurisdiction over requests for mandamus, but that...more
On March 1, 2021, the Supreme Court heard oral arguments in Arthrex v. Smith & Nephew, No. 19-1434, on March 1, 2021, asking whether the appointment of PTAB judges is consistent with the way that “Officers of the United...more
On December 7, 2020, the PTAB granted Activ Financial Systems, Inc.’s (“Activ”) petition for inter partes review of claim 43 and 44 of IP Reservoir LLC’s (“IP Reservoir”) U.S. Patent No. 10,062,115 (the ’115 Patent), directed...more