In Laboratoire Francais du Fractionnement et des Biotechnologies S.A. v. Novo Nordisk Healthcare AG, the Patent Trial and Appeal Board (PTAB) denied the Petitioner’s motion to terminate the inter partes review (IPR) and to...more
The PTAB recently denied institution of inter partes review (IPR) for claims 1 and 46 of U.S. 7,464,040 in eClinicalWorks, LLC et al. v. Decapolis Systems, LLC, IPR2022-0229, Paper 10 (PTAB April 13, 2022). The denial was...more
The Board denied post grant review in Palo Alto Networks, Inc. v. Centripetal Networks, Inc. under 35 U.S.C. § 325(d) after applying the Advanced Bionics framework as informed by the factors outlined in Becton. IPR2021-01520...more
Typically, a Motion for Joinder to an earlier post-grant review (“PGR”) must be filed within one month of the institution of the earlier PGR. 37 C.F.R. § 42.222(b).While the Patent Trial and Appeal Board (“PTAB”) does have...more
The PTAB recently denied a motion to dismiss a Revised Petition and terminate an inter partes review (IPR) proceeding despite Petitioner’s alleged withdrawal of the Original Petition and failure to comply with the word limit...more
4/4/2022
/ Certificates of Compliance ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Motion to Dismiss ,
Motion to Withdraw ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
Regulatory Requirements ,
Tesla
In the PTAB’s recent decision in Code 200 v. Bright Data Ltd., IPR2021-01503, Paper No. 13 (PTAB Mar. 14, 2022), the PTAB expounded upon the circumstances in which joinder of a “me-too” case under § 315(b) was not...more
Following the grant of institution of a recent IPR petition in the matter of Satco Products, Inc. v. The Regents of the University of California, IPR2021-00662, Paper 26 (PTAB Feb. 11, 2022) concerning U.S. Patent No....more
Recently, the Patent Trial and Appeals Board (PTAB) declined to terminate an inter partes review (IPR) proceeding despite the Petitioner’s alleged failure to identify all the real parties-in-interest (RPIs)....more
The institution rate for post-grant petitions in FY 2022 through the end of January 2022 (Oct. 1, 2021 through January 31, 2022) stands at 63% (279 instituted, 164 denied) compared to 59% in the previous fiscal year....more
The patent fight between Caltech and Broadcom/Apple made waves this month when the Federal Circuit vacated the $1.1 billion infringement award that Caltech had won in district court....more
2/22/2022
/ Apple ,
Broadcom ,
Estoppel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Vacated
The institution rate for post-grant petitions in FY 2022 through the end of November 2021 (Oct. 1, 2021 through Nov. 30, 2021) stands at 66% (138 instituted, 71 denied) compared to 59% in the previous fiscal year....more
Biofrontera AG (“Petitioner”) filed an unopposed motion to dismiss the petition during the preliminary phase of the proceedings. Here, DUSA Pharmaceuticals, Inc. (“Patent Owner”) had not yet filed a Preliminary Response, and...more
A recent PTAB decision in Sattler Tech Corp. v. Lyu represents an important reminder to carefully review the procedural and substantive requirements for filing a petition for an AIA trial, especially when dealing with...more
On November 30, the PTAB entered its final written decision in Unified Patents, LLC v. 2BCom, LLC on the patentability of the claims of U.S. Patent No. 7,127,210 (the ‘210 patent).
...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
The statistics from the PTAB for FY2021 are in, and the total PTAB petitions filed in FY2021 are down a bit from the previous year. A total of 1,401 petitions were filed—IPR (1308) and PGR (93)—compared to 1513 in FY2020,...more
In an inter partes review (IPR), the scope of discovery is expressly stated in the C.F.R. and additional discovery must either be agreed upon by the parties or granted by the Board when it “is necessary in the interest of...more
On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Boalick lifted a May 1, 2020 stay issued by the PTAB pending the Supreme Court’s consideration of Arthrex in which 103 cases were placed in “administrative...more
11/11/2021
/ Administrative Law Judge (ALJ) ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Stays ,
Vacated
Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement. A recent motion met such a fate in Ice Castles, LLC v....more
Patent Owner (Provisur Technologies) requested authorization to file a motion to strike portions of Petitioner’s (Weber, Inc.) Reply and certain evidence submitted therewith, which Petitioner opposed. Patent Owner argued...more
On October 26, 2021, President Biden nominated Kathi Vidal – the managing partner of Winston and Strawn’s Silicon Valley office – as Director of the United States Patent and Trademark Office (USPTO). ...more
Rule 42.23(b) is clear, “A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply...more
We recently reported on bipartisan legislation introduced by Senators Patrick Leahy (D) and John Cornyn (R) to significantly revamp certain features of the America Invents Act (AIA), ten years after its debut. This proposed...more
10/22/2021
/ America Invents Act ,
Estoppel ,
Injury-in-Fact ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
Regulatory Agenda ,
Regulatory Reform ,
Regulatory Standards ,
Standing ,
USPTO
The institution rate for post-grant petitions in FY 2021 through the end of August 2021 (Oct. 1, 2020 through Aug. 31, 2021) stands at 58% (658 instituted, 471 denied) compared to 56% in the previous fiscal year. The Patent...more
Trade Secrets in the HAV Industry Trade secrets are invaluable in the HAV industry as its growth accelerates in the fast lane. HAV players defend their technology aggressively against competitors and departing employees who...more
9/8/2021
/ Automation Systems ,
Automotive Industry ,
Confidential Information ,
Connected Cars ,
Driverless Cars ,
Intellectual Property Protection ,
Motor Vehicles ,
NHTSA ,
Proprietary Information ,
Regulatory Standards ,
Reporting Requirements ,
Safety Standards ,
Trade Secrets