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State Waived Sovereign Immunity by Asserting Challenged Patents in District Court

In a rare order by an expanded panel that included the chief, deputy chief and vice chief judges, the Patent Trial and Appeal Board (PTAB) denied the patent owner’s motions to dismiss based on sovereign immunity under the...more

PTAB Underscores Reasons for Denying Institution Under 35 USC § 325(d)

The Patent Trial and Appeal Board (PTAB or Board) designated as informative three decisions denying institution of inter partes reviews. CULTEC, Inc. v. Stormtech LLC, Case No. IPR2017-00777 (Grossman, APJ) (Aug. 22, 2017);...more

Expanded PTAB Panel Explains Exercise of Discretion on Second-Bite Petitions

A rare expanded panel (including the chief judge) of the Patent Trial and Appeal Board (PTAB or Board) issued an precedential decision denying requests for rehearing of decisions denying institution in five inter partes...more

Federal Circuit Issues Rare Reversal of PTAB IPR Decision Confirming Patent Claims

In a rare reversal without remand, the US Court of Appeals for the Federal Circuit vacated a Patent Trial and Appeal Board (PTAB or Board) decision finding claims of a challenged patent not unpatentable in an inter partes...more

PTAB’s Consideration of Prior Art Needs a Tune Up

The US Court of Appeals for the Federal Circuit remanded a case to the Patent Trial and Appeal Board (PTAB) where the PTAB had failed to consider a specific prior art combination and unpatentability argument advanced by the...more

If You Need a Second Bite at the IPR Apple, Take It Quickly

In a decision denying a second petition for inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) elucidated the factors weighing against granting the petitioner’s request. The decision underscores the PTAB’s...more

Inter Partes Re-Examination Estoppel Saves Rejected Claims

Addressing statutory estoppel issues in connection with inter partes re-examination, the US Court of Appeals for the Federal Circuit ordered the Patent Trial and Appeal Board (PTAB) to dismiss a re-examination against certain...more

Sovereign Immunity Can Shield State University Research Foundations in PTAB Proceedings

Addressing the application of the sovereign immunity defense under the 11th Amendment in the inter partes review (IPR) context, the Patent Trial and Appeal Board (PTAB) dismissed three IPR petitions, finding that the...more

PTAB Sanctions Successful IPR Petitioner, Awards Fees to Patent Owner

Addressing the “real parties in interest” requirement and claim construction issues in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) sanctioned the petitioner for failing to disclose a corporate...more

PTAB Uses § 315(e)(1) Estoppel to Narrow IPR Scope

In two recent final written decisions (FWDs) rendered in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board (PTAB or Board) narrowed the scope of the proceedings by terminating the proceedings with...more

PTAB: On Second Thought, Your IPR Is Instituted (AVX Corp. v. Greatbatch Ltd.)

In what could be a first, the Board granted-in-part a petitioner’s rehearing request, reversing its earlier decision not to institute an inter partes review (IPR). In reversing, the majority of the Board acknowledged that the...more

It Can Happen: PTAB Alters Final Written Decision on Rehearing - Square, Inc. v. REM Holdings 3, LLC

In a rare decision granting a petitioner’s rehearing request, the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier position in a final written decision where it found that the petitioner had not shown that...more

Citing a PTO’s Intervenor Brief, the PTAB Grants Rehearing and Clarifies Scope of Joinder - Zhongshan Broad Ocean Motor Co., Ltd....

In a decision granting a petitioner’s rehearing request and joinder motion, an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier decisions, explaining that those decisions were based on...more

PTAB Clarifies Requirements for Claim Amendments - MasterImage 3D, Inc. and MasterImage 3D Asia, LLC v. RealD Inc.

In an order perhaps indicating that the tide is turning for patent owners seeking to amend claims in inter partes review (IPR), an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) provided clarification as...more

A Kinder, Gentler PTAB Allows Claim Amendments - REG Synthetic Fuels LLC v. Neste Oil Oyj

In a final written decision, the Patent Trial and Appeal Board (PTAB or Board) agreed with the petitioner that the original challenged claims were unpatentable but at the same time granted the patent owner’s motion to amend,...more

PTAB Issues Dissent for Requested Adverse Judgment - Target Corp. v. Destination Maternity Corp.

In a case with more twists that a Game of Thrones plot, an unexpected dissent issued from an order of the Patent Trial and Appeal Board (PTAB or Board) granting the patent owner’s requested cancelation of the challenged...more

PTAB: We Are Disinclined to Acquiesce to Your Rehearing Request - Conopco Inc. dba Unilever, v. The Procter & Gamble Company

In a decision denying rehearing of the order denying institution of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) explained the factors it considers in making institution decisions based on...more

IPR Privity Analysis Includes Post-Complaint Period - VMWare, Inc. v. Good Technology Software, Inc.

Clarifying the privity requirement for inter partes review (IPR) petitions, the U.S. Patent and Trademark Office (PTO) Patent Trial and Appeal Board (PTAB or Board) explained that privity should be determined looking at the...more

PTAB Issues Rare Grant of Rehearing and Clarifies Scope of Joinder - Target Corp. v. Destination Maternity Corp.

In a rare decision granting a petitioner’s request for rehearing, a twice-expanded panel of the Patent Trial and Appeal Board (PTAB or Board) reversed its earlier decisions denying institution of the inter partes review (IPR)...more

Expert Witness Testimony Normally Improper for Preliminary Response - B/E Aerospace, Inc. v. Mag Aerospace Industries, LLC

Clarifying what is impermissible “new” evidence for a Patent Owner Preliminary Response in an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) ordered that the patent owner’s exhibit, in the form...more

PTAB Issues Rare Dissent in Non-Institution Decision

AOL Inc., et al. v. Coho Licensing LLC - In a decision denying institution of an inter partes review (IPR), the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (PTAB or Board) decided that the...more

Independent Corroboration Required To Prove Conception

Microsoft Corp. v. SurfCast, Inc. - Addressing the requirements for antedating prior art, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) ruled all claims of a challenged patent unpatentable,...more

PTAB Expands Discovery for Inter Partes Review

GEA Process Engineering, Inc. v. Steuben Foods, Inc. - In a decision that has the potential to expand the scope of permissible discovery in inter partes reviews (IPRs) as well as other post-grant procedures under the...more

PTAB Designates Two Recent Decisions as Informative

Garmin Int’l, Inc., et al. v. Cuozzo Speed Technologies LLC; Idle Free Systems, Inc. v. Bergstrom, Inc. - The Patent Trial and Appeal Board (Board) recently designated as “informative” two decisions earlier released...more

PTO Decision Not to Institute IPR Is Final and Not Appealable

ZOLL Lifecor Corp. v. Philips Electronics North America Corp. - Effectively reiterating a decision from earlier this year, the U.S. Court of Appeals for the Federal Circuit granted a patent owner’s motion to dismiss an...more

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