Ex parte reexaminations have re-emerged as an increasingly important component of patent litigation and licensing negotiations. With the passage of the America Invents Act (“AIA”) and the advent of inter partes reviews...more
3/23/2022
/ America Invents Act ,
Estoppel ,
Ex Partes Reexamination ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 325(d) ,
USPTO
[co-author: Jamie Dohopolski]
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
3/7/2022
/ §315(e) ,
35 U.S.C. § 285 ,
America Invents Act ,
Attorney's Fees ,
Biologics ,
Biosimilars ,
Biotechnology ,
Chemical Compounds ,
Claim Construction ,
Collateral Estoppel ,
Constitutional Challenges ,
Corporate Counsel ,
Credibility ,
Declaration ,
Depositions ,
Enhanced Damages ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Exceptional Case ,
Expert Testimony ,
Expert Witness ,
Final Written Decisions ,
Hatch-Waxman ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventors ,
Life Sciences ,
Motion to Amend ,
Obviousness ,
Orange Book ,
Parallel Proceedings ,
Patent Applications ,
Patent Cancellation ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-AIA Patents ,
Printed Publications ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
Testimony ,
USPTO ,
USPTO Pilot Program ,
Vacated ,
Written Descriptions
In our May 2021 Newsletter, we discussed whether patent owners could contract away the ability for a challenger to bring Patent Trial and Appeal Board (PTAB) invalidity challenges, e.g., inter partes or post grant reviews. We...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
9/29/2021
/ Administrative Patent Judges ,
Administrative Procedure Act ,
AIPLA ,
Evidence ,
Final Written Decisions ,
Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
LEAP ,
Mootness ,
Obviousness ,
Oral Argument ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Professional Development ,
USPTO ,
Young Lawyers
Petitioners and Patent Owners alike have started filing stipulations in district court and at the International Trade Commission to leverage the Fintiv factors in their favor on the issue of discretionary denial at the Patent...more
8/4/2021
/ Denial of Institution ,
Evidence ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Statutory Deadlines ,
Stipulations
[co-author: Jay Bober, Summer Associate]
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for...more
8/2/2021
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Appointments Clause ,
Burden of Proof ,
Claim Construction ,
Denial of Institution ,
Evidence ,
Executive Branch ,
Executive Powers ,
Intel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Oral Hearings ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition For Rehearing ,
Prejudice ,
Prior Art ,
Qualcomm ,
Remand ,
SCOTUS ,
Statutory Deadlines ,
Stipulations ,
Sua Sponte ,
United States v Arthrex Inc ,
USPTO ,
Vacated
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
6/3/2021
/ Claim Construction ,
Estoppel ,
Final Written Decisions ,
Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Inventors ,
IP License ,
L'Oreal ,
Obviousness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Philip Morris ,
Post-Grant Review ,
Prior Art ,
Remand ,
RJ Reynolds ,
Section 337 ,
USPTO ,
Vacated ,
Written Descriptions
In John Bean, the patent owner’s only competitor, Morris & Associates, responded to a demand letter with evidence of invalidity. John Bean Technologies Corporation v. Morris & Assocs. Inc., Cases 2020-1090, 2020-1148, Slip...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
3/31/2021
/ § 315(b) ,
America Invents Act ,
Claims Limitations Period ,
Demand Letter ,
Denial of Institution ,
Due Process ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Mandamus Petitions ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO ,
Willful Infringement
Petitioners beware – the Board holds you to what is submitted on filing day for required documents. In Shenzhen Aurora Technology Company, Ltd. v. Putco, Inc., IPR2020-00670, “[t]he Petition relies on foreign language...more
10/28/2020
/ Affidavits ,
Evidence ,
Filing Requirements ,
Foreign Language ,
Inadvertent Errors ,
Litigation Strategies ,
Patent Filings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Translations
In Network-1 Technologies, Inc. v. Hewlett-Packard Company, the Federal Circuit vacated and remanded the district court’s holding that joinder petitioner Hewlett Packard (“HP”) (1) could have tried to raise new grounds in its...more
10/26/2020
/ §315(e) ,
Appeals ,
Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Judgment As A Matter Of Law ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Vacated
Last month’s newsletter discussed Alacritech, Inc. v. Intel Corp, where patent owner Alacritech appealed a final written decision (FWD) of the Patent Trial and Appeal Board (“Board”) for inter partes review (IPR)...more
9/19/2020
/ Administrative Procedure Act ,
Appeals ,
Burden of Persuasion ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Invalidity ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Reaffirmation ,
Substantial Evidence Standard
The Federal Circuit recently decided a reexamination case, VirnetX v. Apple and Cisco, that addressed two issues: (1) was requester estopped from maintaining its reexams under the pre-AIA version of 35 U.S.C. § 317(b) (2006)...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
8/30/2019
/ § 315(b) ,
Administrative Proceedings ,
Estoppel ,
Inter Partes Reexamination ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Partial Institution ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Section 325(d) ,
Time-Barred Claims ,
USPTO
In Forum v Flow Valve, decided June 17, 2019, the Federal Circuit held Flow Valve’s reissue claims were invalid for failing to comply with 35 U.S.C. 251(a): “for broadening reissue claims, the specification of the original...more
The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more
7/20/2019
/ Administrative Backlogs ,
Administrative Procedure ,
America Invents Act ,
Ex Partes Reexamination ,
Patent Expiration ,
Patent Invalidity ,
Patent Ownership ,
Patent Reissue Applications ,
Patents ,
Prior Art ,
Reissue Patents ,
USPTO
In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more
5/28/2019
/ Claim Construction ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
Motion to Terminate ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Validity ,
Patents ,
Prior Art ,
Section 102 ,
Section 103 ,
Section 112 ,
Trial Court Orders
IPO published the following announcement on April 1st:
Today the U.S. Supreme Court announced that it is reversing its infamous 2014 decision on patent eligibility in Alice Corp. v. CLS Bank and remanding. The court took...more
In a precedential decision Realtime (page 8-9) and a follow-on non-precedential decision Polygroup (page 15), two Federal Circuit panels (with Dyk on each) appear to hold that a single two-reference obviousness Ground, when...more
2/27/2019
/ Alternative Pleadings ,
Appeals ,
Follow-On Patent Petitions ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Printed Publications ,
Statement of Grounds
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
2/25/2019
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Defense Strategies ,
Joinder ,
Leave to Appeal ,
Litigation Strategies ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Right To Appeal ,
Standing
Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being...more
This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more
11/21/2017
/ America Invents Act ,
Ex Partes Reexamination ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Examinations ,
Patent Invalidity ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 325(d)