On October 29, 2024, BabyBjörn AB (“BabyBjörn”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,786,055 (“the ’055 Patent”), which is assigned to The ERGO Baby Carrier, Inc. (“ERGO Baby”). ...more
5/28/2025
/ Baby Products ,
Disclosure Requirements ,
Filing Requirements ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Pleading Standards ,
Prior Art
On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”). The ’768 Patent...more
5/8/2025
/ Advertising ,
Appeals ,
Digital Media ,
Hulu ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Section 101 ,
Statutory Interpretation ,
Vacated
In Lashify v. ITC, the Federal Circuit held that the economic prong of the domestic industry requirement, which is a precondition for obtaining International Trade Commission Section 337 relief, can be satisfied with...more
On June 6, 2024, Shenzhen Waydoo Intelligence Technology Co., Ltd. (“Waydoo”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,359,044 (“the ’044 Patent”) (“IPR998”), assigned to MHL Custom, Inc. (“MHL”)....more
On March 23, 2024, Nearmap US, Inc. (“Nearmap”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 10,671,648 (“the ’648 Patent”) (“IPR716”), assigned to Eagle View Technologies, Inc. (“Eagle View”). The...more
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 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
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
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
It is well-established that a counterclaim for invalidity in a district court litigation does not trigger the 35 U.S.C. § 315(a) bar. See 35 U.S.C. § 315(a)(3). See also our previous posts discussing strategies for...more
Due to the relatively low number of post-grant reviews (“PGR”) filed to date, not many district courts have spoken on the scope of PGR estoppel. In GREE, Inc. v. Supercell Oy, No. 2:19-cv-00071 (E.D. Texas), Magistrate Judge...more
9/4/2020
/ Estoppel ,
Motion To Strike ,
Parallel Proceedings ,
Partial Summary Judgments ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Prior Art ,
Section 101
In a recent summary determination order, ALJ Bullock found that complainants cannot always rely on circumstantial evidence to satisfy the Section 337 importation requirement. Certain Height-Adjustable Desk Platforms and...more
To institute an inter partes review (IPR), the petition requesting the proceeding must be filed within one year of the petitioner or real party in interest (RPI) receiving a complaint alleging patent infringement. 35 U.S.C. §...more
In a recent Enforcement Initial Determination, ALJ Shaw held that Sony had violated previously issued cease and desist orders (“CDOs”) and determined that the appropriate penalty was a fine of $210,134 – Sony’s net profit...more
10/18/2019
/ Administrative Law Judge (ALJ) ,
Cease and Desist Orders ,
Exclusion Orders ,
Initial Determination (ID) ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patents ,
Presidential Review ,
Section 337 ,
Sony ,
Supply Chain
Despite the prohibition on patenting “abstract ideas” and the tendency of computer software claims to fall into that category, claims directed at improving faulty software systems may still be patentable if they encompass an...more
9/4/2019
/ Abstract Ideas ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Inter Partes Review (IPR) Proceeding ,
Motion for Summary Judgment ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patent-in-Suit ,
Patents ,
Section 101 ,
Software Patents