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Prior Declaratory Judgment Action Fatal to CBM Petitioner - GTNX, Inc. v. INTTRA, Inc.

In a decision bringing four instituted covered business method (CBM) review proceedings to a full stop, the Patent Trial and Appeal board (PTAB or Board) reiterated that a petitioner’s declaratory judgment action filed before...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 Seven Recent Decisions as Informative

The Patent Trial and Appeal Board (PTAB) recently designated seven decisions from inter partes review (IPR) proceedings as informative opinions: ZTE Corp. v. ContentGuard Holdings, Inc., Case No. IPR2013-00454 (PTAB, Sept....more

11/11/2014

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

PTAB Threatens Sanctions for Unauthorized E-mails

Samsung Electronics Co., Ltd., et al. v. Black Hills Media, LLC - Addressing a patent owner’s unauthorized e-mail arguing for additional discovery and the petitioner’s likewise unauthorized responsive e-mail, an...more

The First Derivation Proceeding: Possession Not Enough: Need to Show Prior Conception of Claim Subject Matter

Catapult Innovations Pty Ltd v. Adidas AG - In denying institution for the first derivation petition considered on the merits, the Patent Trial and Appeal Board (the Board) found that the petition was fatally flawed in...more

First Patents Survive Inter Partes Review Fully Intact

ABB Inc. v. ROY-G-BIV Corp. - In the past several months, decisions have been rendered in the first wave of inter partes reviews filed under the American Invents Act (AIA). The early IPR decisions of the Patent Trial...more

PTAB Not a “Death Squad”—More Like a Surgeon

Xilinx, Inc. v. Intellectual Ventures I LLC; Illumina, Inc. v. Trs. of Columbia Univ.; Micron Tech., Inc. v. Bd. Of Trs. of Univ. of Ill.; CBS Interactive, Inc. v. Helferich Patent Licensing, LLC - In the final written...more

A Primer On Claim Amendments in Post-Grant Review

Bloomberg Inc. et al. v. Markets-Alert Pty Ltd. - In the final written decision of a covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB) sided with the petitioner, canceling all claims under...more

PTAB: The Name of the Game Is the Claim

BlackBerry Corporation et al. v. MobileMedia Ideas LLC - Representing the first outcome of its kind, in the final written decision of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) terminated...more

Pre-AIA Litigation Triggers Time Bar for Inter Partes Review - Apple Inc. v. VirnetX, Inc. and Science Applications International...

In response to a petitioner’s request for rehearing of a decision denying institution of an inter partes review (IPR) proceeding, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (Board) reiterated that...more

PTAB Reluctant to Exclude Evidence - Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.

In the final written decisions of two related covered business method (CBM) patent reviews of the same patent, the U.S. Patent and Trademark Office’s (PTO) Patent Trial and Appeal Board (Board) sided with the petitioner,...more

Arbitration Proceeding Do Not Trigger One-Year SOL for Inter Partes Review - Certain Computers and Computer Peripheral Devices,...

In response to a patent owner’s post-institution motion to terminate an inter partes review (IPR) proceeding, an expanded panel of the Patent Trial and Appeal Board (PTAB) gave further definition to the triggering events of...more

Declaratory Judgment Dismissed Without Prejudice Does Not Bar Later IPR - Clio USA, Inc. v. The Procter and Gamble Company

In an institution decision by the Patent Trial and Appeal Board (Board), the Board made it clear that a prior declaratory judgment action filed by the petitioner, if voluntarily dismissed without prejudice, does not bar a...more

Well-Known Technology Is Not a “Substitute Fulfillment” for Patent Eligible Subject Matter - CRS Advanced Technologies, Inc. v....

In a Covered Business Method (CBM) post-issuance review, the Patent Trial and Appeal Board (PTAB) cancelled all claims under review, concluding that the challenged claims were directed to non-eligible subject matter directed...more

Covered Business Method Review Is All or Nothing - Liberty Mutual Insurance Co. v. Progressive Casualty Insurance Co.

In the final written decision of the second covered business method (CBM) patent review, the Patent Trial and Appeals Board (PTAB) cancelled all claims under review, noting that instituting a CBM review based on a...more

The PTAB’s User Manual for Amending Claims - Idle Free Systems, Inc. v. Bergstrom, Inc.

In what is only the second final written decision of an inter partes review (IPR), the United States Patent and Trademark Office Patent Trial and Appeals Board (Board) cancelled all claims under review, finding for petitioner...more

A Road Test of the New PTAB and a Road Map for Future IPR’s - Garmin Int’l, Inc., v. Cuozzo Speed Techs. LLC

In the final decision of the first inter partes review (IPR) (under the America Invents Act), in a proceeding that included a rejection of the patent owner’s attempt to antedate prior art using, as evidence, an inventor’s...more

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