The District Court for the Northern District of Ohio dismissed Cybergenetics Corp.’s infringement suit after determining that the asserted claims—which recite mathematical algorithms for analyzing data taken from a DNA...more
In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness challenge by relying on evidence from an earlier litigation to establish objective indicia of nonobviousness.
In RTI...more
Declaratory judgment (“DJ”) actions have fallen out of favor in patent cases in recent years. In 2011, DJ complaints made up approximately 11 percent of all patent cases filed that year. Last year, they made up less than 5...more
The Federal Circuit recently held a generic drug developer lacked Article III standing to appeal an adverse patentability determination by the Patent Trial and Appeal Board (PTAB) because it failed to prove that it suffered...more
The United States Court of Appeals for the Federal Circuit (“Federal Circuit”) recently reversed a preliminary injunction enjoining a patentee from making allegations of patent infringement and threatening litigation against...more
A panel at the Patent Trial and Appeal Board (the “Board”) recently considered whether a dispute over a patent’s priority date justified filing two petitions for inter partes review (IPR) against the same claims.
The...more
The Federal Circuit upheld a district court’s finding of inequitable conduct on the basis that appellants and its lawyers intentionally withheld material information involving the on-sale bar from the United States Patent &...more
Judge Gilstrap in the Eastern District of Texas has denied defendants’ motion to stay the post-trial phase of a patent infringement litigation pending ex parte reexamination where the request for reexamination was filed four...more
3/6/2020
/ Administrative Remedies ,
Collateral Attack ,
Ex Partes Reexamination ,
Jury Verdicts ,
Motion To Stay ,
Patent Act ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Post Trial Motions ,
USPTO
The Federal Circuit recently addressed whether the Patent Trial and Appeal Board (PTAB) can institute inter partes review (IPR) on a ground not advanced by the petitioner, as well as whether the general knowledge of a person...more
A panel at the Patent Trial and Appeal Board (PTAB) recently held that a certificate of correction fixing an error in a patent’s claim of priority did not apply retroactively in light of an already issued final written...more
Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more
2/3/2020
/ Estoppel ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
A Central District of California judge recently granted summary judgment of no obviousness based on inter partes review (IPR) estoppel because the only prior art references used to challenge patent validity could have been...more
1/31/2020
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Validity ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
In inter partes review (IPR) proceedings of patents relating to printer technology, the Patent Trial and Appeal Board (PTAB) granted Patent Owner’s motion to compel testimony over Petitioner’s arguments that the information...more
12/27/2019
/ Attorney Communications ,
Discovery ,
FRCP 26 ,
Inter Partes Review (IPR) Proceeding ,
Motion to Compel ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Testimony ,
Work-Product Doctrine
The Patent Trial and Appeal Board allowed live testimony in MPOWERED INC. v. LuminAID Lab, LLC, IPR2018-01524, on November 1, 2019, where a panel granted Patent Owner’s Motion for Live Testimony from a named inventor of the...more
A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more
11/13/2019
/ Affirmative Defenses ,
Estoppel ,
Evidence ,
Final Written Decisions ,
FRCP 12(f) ,
Inter Partes Review (IPR) Proceeding ,
Motion To Strike ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Pleadings ,
Post-Grant Review ,
Prior Art ,
Question of Fact ,
Section 101
The Patent Trial and Appeal Board (PTAB) recently issued an Order that illustrates the circumstances in which a party may obtain additional discovery in an inter partes review (IPR). In Apple Inc. v. Singapore Asahi Chemical...more
11/11/2019
/ Additional Discovery ,
Cross Examination ,
Discovery ,
Document Productions ,
Expert Witness ,
Garmin Factors ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Scope of Discovery Requests
A district court has denied a request to amend patent infringement contentions to add claims obtained through ex parte reexamination after the case had been substantially narrowed through a parallel inter partes review (IPR)...more
The Patent Trial and Appeal Board has rejected a patent owner’s argument that a forum selection clause found in a Non-Disclosure Agreement (NDA) barred the Board from instituting a petition for inter partes review...more
10/21/2019
/ Equitable Estoppel ,
Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Motion to Transfer ,
Non-Disclosure Agreement ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Preliminary Injunctions ,
Samsung
The Federal Circuit recently overturned the Patent Trial and Appeal Board’s (PTAB) determination that claims covering a cancer treatment method were obvious.
The patent at issue is directed to a method of treating...more
A magistrate judge determined that a prevailing party in a district court litigation could be entitled to an award of attorneys’ fees based solely on conduct during an inter partes review (IPR) proceeding.
In September...more
A Central District of California judge has clarified his prior ruling on summary judgment that estoppel under 35 U.S.C. § 315(e)(2) that applies to certain obviousness invalidity grounds raised by Defendants. In the prior...more
On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more
8/20/2019
/ Appeals ,
Burden of Proof ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Remand ,
Vacated
A Patent Trial and Appeal Board (PTAB or Board) panel has determined that emailing a proposed amended complaint is not “service of a complaint” under 35 U.S.C. § 315(b).
On January 23, 2018, Aristocrat Technologies, Inc....more
A panel at the Patent Trial and Appeal Board (PTAB) recently considered whether to stay an ex parte reexamination proceeding where the patent was also the subject of a parallel inter partes review (IPR).
On September 11...more
The Patent Trial and Appeal Board (PTAB) has denied a petitioner’s request for inter partes review (IPR) finding that petitioner failed to demonstrate a reasonable likelihood of prevailing with respect to at least one...more