On May 20, the Federal Circuit held fees incurred in voluntary parallel IPR proceedings were not recoverable under 35 U.S.C. § 285. Dragon Intell. Prop. LLC v. DISH Network L.L.C., No. 2022-1621, slip op. at 8 (Fed. Cir. May...more
During an inter partes review (IPR) initiated by Ingenico, the PTAB found certain claims from three patents held by IOEngine to be unpatentable. The patents at issue are directed to secure communications for portable devices...more
In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review. The PTO has now issued a Notice of Proposed Rulemaking (“NPRM”) formalizing the Director Review...more
In denying inter partes review in OBM, Inc. & Cholla Energy LLC v. Lancium LLC, the PTAB again made clear that “technical availability” of a reference is not enough to establish it is a printed publication. Here, the PTAB...more
Director Vidal recently issued sanctions against OpenSky Industries (“OpenSky”) for attempted extortion during settlement negotiations and abuse of the IPR process for US Patent 7,725,759 and awarded $413,264.15 to VLSI...more
2/26/2024
/ Attorney's Fees ,
Expert Testimony ,
Extortion ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Sanctions ,
Settlement Negotiations
Parties before the PTAB should be careful to submit supplemental materials as soon as practicable. In Extractiontek Sales v. Gene Pools Tech., the PTAB denied a Patent Owner’s motion to submit a deposition transcript from a...more
On January 10, 2023, a PTAB panel granted a Petitioner’s Request for Rehearing of Final Written Decision and, contemporaneously, issued a revised Final Written Decision in Unified Patents, LLC, v. 2BCom, LLC, IPR2020-00996,...more
After a final written decision issues, an IPR petitioner is statutorily estopped from going back to the district court and arguing that the same claims are “invalid on any ground that the petitioner raised or reasonably could...more
Within the past few weeks, the PTAB has issued new guidance addressing a number of important issues including the use of applicant admitted prior art, the Director review process, and changes to PTAB hearings going...more
Recently, Cloudflare Inc. succeeded in convincing the PTAB to institute in IPR2021-00969 against a Sable Network, Inc.’s patent directed toward data flow. While the institution itself is not out of the ordinary—the...more
12/8/2021
/ Crowdsourcing ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Portfolios ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
In Baker Hughes Oilfield v. Hirshfeld, the Federal Circuit held that the PTAB violated the Administrative Procedure Act (“APA”) by finding certain instituted claims obvious on grounds it had indicated in its institution that...more
In Apple, Inc. v. Parus Holdings, Inc. (IPR2020-00686), the PTAB denied the Patent Owner’s motion to exclude portions of the Petitioner’s supplemental expert declaration. Here the Patent Owner sought to exclude a number of...more
The results of a recent update to the PTAB Multiple Petition Study show Petitioners face an uphill battle when attempting to utilize a multiple petition strategy. These results, discussed during the December 10, 2020...more
The Federal Circuit’s decision in ESIP Series 2 v. Puzhen Life USA, LLC, No. 19-1659, held that the “no appeal” provision found in 35 U.S.C. § 314(d) (“Section 314(d)”) bars judicial review of PTAB determinations regarding...more
This ruling may have eliminated the practice of transferring patents to Native American tribes for immunization from IPR proceedings.
The Federal Circuit, in a matter of first impression, has ruled that tribal sovereign...more