The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...more
3/10/2025
/ Appeals ,
Article III ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents
On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” That memorandum discussed...more
Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media...more
2/25/2025
/ Appeals ,
Enablement Inquiries ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
Palo Alto Networks (PAN) filed a petition for inter partes review of Centripetal Networks’ patent—U.S. Patent No. 10,530,903—which is directed to a computing system for correlating packets in communication networks with a...more
The Federal Circuit affirmed six PTAB decisions that held unpatentable as obvious 79 claims of three Cytiva Bioprocess (“Cytiva”) challenged patents and reversed the PTAB decision upholding four claims....more
2/7/2025
/ Biotechnology ,
Healthcare ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Life Sciences ,
Likelihood of Success ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Popular
The PTAB recently denied institution of inter partes review of a patent directed to deep packet inspection in software defined networks in Juniper Networks, Inc. v. Orckit Corporation, IPR2024-00895. Applying the General...more
On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...more
The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co.,...more
1/23/2025
/ Appeals ,
Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Trial Practice Guidance ,
USPTO
When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are “unavailing.” ...more
Petitioners may soon need to check their account balances, as the United States Patent and Trademark Office (“USPTO”) is raising patent fees across the board, effective January 19, 2025. 89 Fed. Reg. 91898....more
In a 2-1 decision, the Patent Trial and Appeal Board (“PTAB”) denied a patent owner’s motion to file two new declarations in connection with its sur-reply, holding that the patent owner failed to prove the extraordinary...more
The PTAB denied institution of inter partes review (IPR) for a patent directed to geothermal technology. Fervo Energy Co. v. Ormat Techs. Inc., IPR2014-00665, Paper 18 (PTAB Sept. 18, 2024). The claimed invention related to...more
The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21, 2024. In...more
12/18/2024
/ Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Legislative Agendas ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
Regulatory Agenda ,
Regulatory Reform ,
USPTO
The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of...more
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). With that principle in mind, the PTAB recently denied institution...more
The PTAB recently denied Bestway (USA), Inc.’s (“Petitioner”) request for PGR of U.S. Pat. No. 11,959,512 B2 (“the ’512 patent”) but declined to enter adverse judgment against Intex Marketing, Ltd. (“Patent Owner”) for...more
On October 25, 2024, the United States District Court for the Eastern District of Pennsylvania ordered Comcast Corporation (“Comcast”) to identify the date on which it learned of each patent, patent application, and printed...more
The PTAB recently excluded a portion of Duration Media LLC’s (Petitioner) reply declaration for containing improper new evidence in an inter partes review petition filed against Rich Media Club LLC (Patent Owner) challenging...more
“The statutory provisions for inter partes reviews, post-grant reviews, and covered-business method patent reviews caution against overly broad discovery and provide the same considerations, including efficient administration...more
On September 24, 2024, the PTAB denied institution of a post-grant review proceeding initiated by Inari Agriculture, Inc. (Petitioner) against Pioneer Hi-Bred International, Inc. (Patent Owner). The patent at issue was U.S....more
Recently, the Patent Trial and Appeals Board (“PTAB”) released a final written decision finding no challenged claims were unpatentable in Duration Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 74 (August 19, 2024). ...more
On October 10, 2024, the USPTO issued a final rule allowing parties to proceed without backup counsel in AIA proceedings and implementing an automatic admission process for pro hac vice attorneys. Full text of the final rule...more
On September 30, 2024, the USPTO issued a final rule governing the process for Director Review of proceedings under the AIA. This formalized the USPTO’s interim Director Review procedures implemented by the USPTO following...more
On June 12, 2024, the USPTO issued a final rule governing the pre-issuance circulation and review of decisions within the PTAB. This formalized current USPTO procedures within the Standard Operating Procedure (SOP4) adopted...more
The PTAB denied institution of inter partes review reasoning that Petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. The...more