The PTAB has been very active in designating decisions precedential and informative in 2019. Here’s a recap of designations so far...more
On September 6, 2019, a PTAB panel including USPTO Director Andrei Iancu instituted inter partes review (“IPR”) of U.S. Patent No. 9,279,259 (“the ‘259 Patent”). The ‘259 Patent is directed to a tile lippage removal system...more
If you don’t have new grounds to add, you may as well copycat. On September 4, 2019, the PTAB denied Microsoft’s petition requesting inter partes review (“IPR”) of U.S. Patent No. 7,167,487 (“the ’487 patent”); furthermore,...more
The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the...more
The PTAB recently designated two decisions as precedential and one decision as informative on discretion to institute review.
Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017)...more
Reexamination can be stayed pending IPR proceedings for good cause shown. The PTAB recently found good cause for a stay had been established when the reexamination proceedings and IPR proceedings had only a single claim in...more
In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying...more
The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board.
The USPTO published the original TPG in August 2012, concurrent with the...more
The United States District Court for the Central District of California recently denied Defendant Adobe Systems Inc.’s motion to stay litigation pending resolution of parallel inter partes review (“IPR”) proceedings before...more
6/21/2019
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Motion To Stay ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Real Party in Interest ,
Section 337 ,
Third-Party
In a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring systems patentable, and allowed substitution of amended claims for others deemed unpatentable. See Syrinix Inc. v. Blacoh Fluid...more
The Federal Circuit recently tightened the standing requirements for an IPR appeal in AVX Corp. v. Presidio Components, Inc., No. 18-1106, 2019 WL 2079178 (Fed. Cir. May 13, 2019). AVX previously challenged the validity of...more
6/7/2019
/ §315(e) ,
Anti-Competitive ,
Article III ,
Estoppel ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Redressability ,
Standing
Petitioners beware. The PTAB will not “play archaeologist with the record” or assume the burden of making arguments if the Petitioner fails to present the asserted reasons for invalidity with the required specificity. Amazon...more
Institution rates have ticked up while petition filing rates are down slightly so far compared to fiscal year 2018. The running rate for institutions through the first six months of FY 2019 is at 64% compared to 60% in the...more
Our previous blog post on NHK Spring Co. v. Intri-Plex Techs., Inc., No. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), noted the PTAB’s exercise of its § 314(a) discretion to deny IPR institution, despite the...more
On April 22, 2019, the PTAB issued an order that the Petitioner must explain the differences among its five petitions to institute inter partes review over the same patent, and that the Patent Owner may respond as to whether...more
Jones Day's Dave Cochran and Matt Johnson discuss recent developments in patent litigation and appeals, including the continuing importance of the PTAB as a jurisdiction of first choice for patent disputes in the United...more
Institution rates have ticked up while petition filing rates are even over fiscal year 2018. The running rate for institutions through the first six months of FY 2019 is at 64% compared to 60% in the previous year...more
Generally, the PTAB does not allow live testimony at oral argument, but recently it designated one of its 2014 decisions as precedential to give guidance as to when the Board will allow live testimony at oral argument. K-40...more
4/1/2019
/ Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
New Evidence ,
Oral Argument ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Testimonial Statements ,
Trial Practice Guidance ,
Witnesses
To facilitate claim amendments in inter partes, post-grant and covered business method patent reviews (collectively AIA trials), the USPTO on October 29, 2018, published a request for comment (“RFC”) on a proposed procedure...more
On October 29, 2018, the Office published a request for comments (“RFC”) on a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively...more
Presidio Components, Inc. (“Presidio”) petitioned for inter partes review (IPR) of U.S. Patent No. 6,144,547 (the “‘547 Patent”), which American Technical Ceramics Corp. and AVX Corporation (together “plaintiffs”) asserted...more
Mylan Pharmaceuticals, Inc. petitioned for inter partes review (IPR) of U.S. Patent No. 6,858,650 (the “‘650 Patent”), which is owned by UCB Pharma GmbH (“UCB”) and is directed to chemical derivatives of a drug for treating...more
2/1/2019
/ Abbreviated New Drug Application (ANDA) ,
Article III ,
Hatch-Waxman ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Standing
On November 30, 2018, the PTAB filed an opinion addressing two procedural issues in Aver Information Inc. v. Pathway Innovations and Technologies, Inc., Case IPR2017-02108, including failure to meet spacing requirements and...more
Assignor estoppel is an equitable doctrine that prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. As reported in a prior post, the Federal Circuit recently stated...more
The PTAB’s November statistics confirmed the expected jump in PTAB filings in November, with many petitioners seeking to file petitions before the changeover from the BRI to Phillips claim construction standard. 212 petitions...more