At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner’s primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date...more
10/20/2023
/ Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
On March 15, 2022, Facet Technologies, LLC (Plaintiff/Patent Owner) filed an infringement suit against LifeScan, Inc. (Defendant/Petitioner) in U.S. District Court for infringement of U.S. Patent No. 8,840,635 (the ’635...more
The Patent Trial and Appeal Board (“PTAB”) recently published a revised PTAB Oral Hearing Guide (August 2023) updating prior guidance on hearings. The revised Guide includes changes to: 1. Remote participation in PTAB...more
Institution of an IPR is automatically barred if the “petition requesting the proceeding is filed more than 1 year after the date on which the petitioner…is served with the complaint alleging infringement of the patent.” 35...more
The PTAB recently denied institution of inter partes review of a patent directed to determining the pitch of roofs after finding that Petitioner failed to directly challenge the sufficiency of Patent Owner’s priority...more
On July 17, 2023, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review petition based on the stature of a related U.S. District Court of...more
Although provisional applications can be used to secure an earlier date for 102(e), the petitioner bears the burden of production in establishing a prior art date for the asserted prior art. The Patent Trial and Appeal Board...more
In recent decision 3M Company v. Bay Materials, the Board denied 3M Company’s (“Petitioner”) second Petition for inter partes review (“Second Petition”) after exercising its discretion under § 314(a) and finding that each of...more
The Patent Trial and Appeal Board (“PTAB” or “Board”) recently denied inter partes review (IPR) of an electrocardiography monitor patent under 35 U.S.C. §325(d), finding that the same or substantially the same prior art or...more
Recently, the PTAB held that Samsung Electronics Co. Ltd. (“Petitioner”), met its burden in showing that a third party (the “Third Party”) was neither a real party-in-interest (“RPI”) nor in privity with Petitioner....more
Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged in an inter partes review (IPR) or post-grant...more
The PTAB recently exercised its discretion under 35 U.S.C. § 314 to deny institution of inter partes review for inefficient use of the PTAB’s time and resources notwithstanding that the petitioner met the threshold for...more
Congress implemented the Leahy-Smith America Invents Act (“AIA”) to “establish a more efficient and streamlined patent system that [would] improve patent quality and limit unnecessary and counterproductive litigation costs.” ...more
The Situation: The U.S. Supreme Court recently denied certiorari in Thaler v. Vidal, leaving intact the Federal Circuit's ruling that only human beings, and not artificial intelligence ("AI") systems, can be inventors under...more
6/23/2023
/ Algorithms ,
Artificial Intelligence ,
Denial of Certiorari ,
Intellectual Property Owner’s Association (IPO) ,
Intellectual Property Protection ,
Inventors ,
Machine Learning ,
Patent-Eligible Subject Matter ,
Patents ,
SCOTUS ,
USPTO
In a rare exercise of authority, the PTAB issued sanctions against a Patent Owner for failure to meet its duty of candor and good faith by withholding information relevant to the patentability of challenged and substitute...more
On May 12, 2023, the Intel v. VLSI chronicle continued as the PTAB issued a final written decision holding that all of the challenged claims of VLSI’s U.S. Patent No. 7,725,759 (“the ’759 patent”) were unpatentable as...more
On May 10, 2023, a PTAB Panel excused the late filings of the Patent Owner and allowed over thirty exhibits and a Corrected Patent Owner Response (“CPOR”) to be submitted into the record in Samsung Electronics Co., Ltd. v....more
The PTAB recently issued back-to-back Fintiv denials. The first denial issued on May 4, 2023. Read here about Samsung Electronics Co. Ltd. v. California Institute of Tech., No. IPR2023-00130, Paper 10 (P.T.A.B. May 4,...more
The Board exercised discretion under § 314 to deny inter partes review in view of co-pending district court litigation. In the Institution Decision, the Board evaluated the Fintiv factors in light of the USPTO Director’s...more
In Short -
The Situation: Workforces are increasingly using generative artificial intelligence ("AI") platforms to generate diverse content ranging from marketing materials, translations, source code, and more....more
In Apple Inc. v. Masimo Corp., the PTAB granted Masimo, the owner of patent 10,687,745 (“the ’745 patent”), their request for production directed to “specific documents identified in regard to [a prior] ITC Investigation,...more
USPTO Director Kathi Vidal recently vacated a PTAB decision denying institution of a post-grant review and remanded the case for further proceedings. The petitioner challenged claims 1–27 of the ’274 patent under 35 U.S.C. §...more
An IPR “shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” ...more
In Apple, Inc. v. Katherine K. Vidal, the Federal Circuit ruled that Apple and the other plaintiffs could continue their suit on a lone surviving challenge to the PTAB Director’s rulemaking procedures regarding institutional...more
On February 24, 2023, Director Kathi Vidal issued a decision under director review granting rehearing and modifying the final written decision for Nested Bean, Inc. v. Big Beings USA Pty. Ltd. Nested Bean, Inc. (“Nested...more