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Prior Art Asserted in Second Petition Should Have Been Asserted in the First

The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same...more

Another Bite? CAFC Allows Expansion of Arguments in Reply

In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more

Fintiv Factor 3 Centers on Degree of Investment, Not Substantive Arguments

In a recent decision, the PTAB granted institution of an IPR despite multiple parallel district court proceedings involving the same patent, and flatly rejected the Patent Owner’s argument that the Petitioner’s “conflicting”...more

FWDs Issue in the Nick of Time to Suspend ITC Orders

After finding that Apple infringed certain AliveCor patents related to wearable devices capable of monitoring a user’s cardiac activity, the International Trade Commission (“ITC”) entered a limited exclusion order and a cease...more

PTAB ‘Guiding Principles’ Favor Supplementary Declaration in ‘Close’ Case

A PTAB panel recently granted a Petitioner’s motion to submit a second expert declaration that directly addressed deficiencies identified by the PTAB’s Institution Decision. While a “close” case, the panel concluded that...more

Lessons Learned: Director Emphasizes Patent Quality in Evaluating General Plastic Factors

In the precedential decision Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017), the PTAB articulated seven non-exclusive factors to be considered before discretionarily denying a...more

Section 285 Did Not Allow For IPR Fees

The Patent Act provides that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. In a recent denial of a motion for attorney fees pursuant to § 285, an Ohio...more

PTAB Will Not Hear AAPA-Basis Grounds

In a recent decision invalidating numerous claims of a patent related to cochlear implants for hearing loss, the PTAB found that Petitioner improperly relied on applicant admitted prior art (AAPA) as the “basis” for one...more

Ho, Ho, No: CAFC Delivers Reversal, Vacatur, and Remand in Christmas Tree Row

The Federal Circuit recently issued another decision in a longstanding dispute between Willis Electric Co. and Polygroup Ltd. involving two patents owned by Willis (U.S. Patent Nos. 8,454,186 and 8,454,187) directed to...more

FULL COURT PRESS: Arthrex Reconsideration Efforts Continue

The Federal Circuit continues to be flooded with petitions to revisit its panel decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, No. 2018-2140 (Fed. Cir. 2019). As previously discussed, all three parties in...more

Strategic Decision to Forgo Expert Does Not Allow a “Second Bite”

The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive”...more

Update: Does § 315(e)(2) Say What It Means and Mean What It Says?

When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more

Court of Federal Claims: Patents Are “Public Franchises, Not Private Property”

Since April 2018 when the U.S. Supreme Court handed down its Oil States decision, patent owners have made various arguments addressing issues that were not resolved in that case. One such example is Christy, Inc. v. United...more

Does § 315(e)(2) Mean What It Says and Says What It Means?

When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more

A Truism that Once Again Bears Repeating: Don’t Wait Until the Last Minute

A recent decision by the Patent Trial and Appeal Board (“PTAB”) denying a petition for inter partes review serves as a stark reminder of the oft-repeated truism, “don’t wait until the last minute.” See VIZIO, Inc. v. ATI...more

Swearing Behind: Don’t Get Stuck in a Catch-22 of Corroboration

The Federal Circuit’s recent decision in Apator Miitors ApS v. Kamstrump A/S, No. 2017-1681 (Fed. Cir. Apr. 17, 2018) (Moore, joined by Linn and Chen) serves as another reminder to sufficiently corroborate inventor testimony...more

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