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
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
The United States petitioned the Supreme Court for certiorari in Arthrex. Cert. Pet., No. 19-1434 (June 25, 2020). Two additional petitions for writs of certiorari have been filed, one by Arthrex and one by Smith & Nephew...more
On May 5, 2020 the Federal Circuit formally barred petitioners from seeking Arthrex remands. The Court issued a precedential order clarifying that only qualifying patent owners may seek the Arthrex remedy. Petitioners, unlike...more
On March 23, 2020, the Federal Circuit denied rehearing and rehearing en banc in Arthrex. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order Denying Rehearing and Rehearing En Banc, Dkt. 115. The court held in Arthrex...more
On Monday, March 23, 2020, the Federal Circuit denied rehearing and rehearing en banc in the Arthrex appeal that found PTAB ALJs to be unconstitutional appointments. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order...more
The Federal Circuit has definitively ruled on the PTAB’s practice of allowing so-called “same-party” IPR joinder. The court held that an IPR petitioner cannot join itself as a party to an existing IPR and cannot add new...more
On September 12, 2018, the PTAB in NHK Spring Co. v. Intri-Plex Techs., Inc. exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an IPR, despite the petition’s timely filing, due to a parallel district...more
In Apple v. Uniloc 2017 LLC, the patent owner moved to amend the claims contingent on an unpatentability finding by the Board. The contingent amendment cancelled the original claims and replaced them with a new claim set. The...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
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
On Thursday, the Federal Circuit issued a precedential decision in Trading Technologies International, Inc. v. IBG Interactive Brokers, LLC, No. 17-2257 (Fed. Cir. Apr. 18, 2019), that provides another data point on how CBM...more
4/23/2019
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Inventions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Precedential Opinion ,
Section 101 ,
Technology
On April 5, 2019, the PTAB designated as informative two decisions relating to 35 U.S.C. § 314(a):
- Chevron Oronite Co. LLC v. Infineum USA L.P., Case IPR2018-00923, Paper 9 (Nov. 7, 2018) (designated: Apr. 5, 2019) [AIA...more
In SAS Institute v. Iancu, the Supreme Court held that when the PTAB institutes inter partes review under 35 U.S.C. § 314, it must decide the patentability of all claims the petitioner has challenged. SAS Institute left open...more
Under 37 C.F.R. § 42.5(d), communications with a Board member regarding a specific proceeding are not permitted “unless both parties have an opportunity to be involved in the communication.” This prohibition, however, does...more
Under 35 U.S.C. § 325(d), the PTAB has discretion regarding whether to institute a covered business method review if the arguments presented in the petition are the same, or substantially the same, as those previously...more
In In re Certain Magnetic Tape Cartridges and Components Thereof, 337-TA-1058 (ITC October 2, 2018, Order), Administrative Law Judge Cheney ruled that even if a respondent is estopped from raising certain invalidity...more
On July 27, 2018, the Federal Circuit reversed the PTAB’s finding that Petitioner GoPro, Inc. failed to establish the public availability of an alleged prior art printed publication. GoPro, Inc. v. Contour IP Holding LLC, __...more
When the Supreme Court issued its decision in SAS Institute regarding partial IPR institution, the PTAB estimated that there were several hundred pending IPRs in which the Board had instituted some, but not all, claims and/or...more
On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, where the Court held that the Patent Trial and Appeal Board (PTAB) must issue a final written decision as to any patent claim...more
On March 20, 2018, Reps. Steve Stivers (R-Ohio) and Bill Foster (D-Ill.) announced in an article that they would introduce the STRONGER Patents Act to the U.S. House of Representatives. More formally referred to as The...more
In previous posts, we have discussed whether the PTAB and the district courts can reach different conclusions on the same issue. In those instances, the Federal Circuit held they can, because the standards applicable at the...more
By Dave Maiorana By now, most PTAB practitioners are familiar with 35 U.S.C. § 325(d), which gives the Board the authority to deny institution of a post-grant proceeding because the same or substantially the same prior art or...more
The PTAB’s practice of partially instituting IPRs has been in the news lately, with Jones Day recently arguing against that practice at the Supreme Court on behalf of the SAS Institute (“SAS”). On December 5, 2017, the week...more
In August 2016, Google petitioned for Inter Partes Review of U.S. Patent No. 7,552,124 (owned by IXI Mobile), asserting that claims 1–10 are unpatentable. In March 2017, the PTAB instituted the IPR as to claims 1–5, but...more