On November 18, 2022, a panel of three PTAB administrative patent judges denied a Patent Owner’s Request for Additional Discovery in Twitter, Inc. v. Palo Alto Research Center Inc., IPR2021-01398. The PTAB found that...more
The PTAB denied a request for institution and joinder because the petitioner was the petitioner in one other instituted IPR directed to the same patent, and the petitioner did not explain adequately to the PTAB why another...more
A PTAB panel recently denied Linquet Technologies, Inc.’s (“Patent Owner”) motion to dismiss an IPR proceeding as moot despite a district court having already invalidated the patent because the final written decision had...more
The PTAB recently hosted a Boardside Chat on effectively presenting technology in AIA proceedings. Patent Trial and Appeal Board Boardside Chat: Presenting Technology in AIA Proceedings, (Nov. 17, 2022) (“Presenting...more
Patent Owner, IP Bridge, filed a patent infringement suit against Petitioner, Ericsson, for infringement of seven of its patents directed at radio communication between a base station and a mobile station and related...more
On March 3, 2021, Via Transportation, Inc. (Plaintiff/Patent Owner) filed an infringement suit against RideCo Inc. (Defendant/Petitioner) in the U.S. District Court for the Western District of Texas for infringement of U.S....more
A PTAB panel recently denied IPR institution where one of the asserted prior art references was non-analogous and thus the POSITA would not have made the proposed § 103 combination. The Chamberlain Group, LLC v. Overhead...more
A PTAB panel recently granted a Petitioner’s motion to submit a second expert declaration that directly addressed deficiencies identified by the PTAB’s Institution Decision. While a “close” case, the panel concluded that...more
Patent Owner, C.R. Laurence Co. Inc. (CRL), filed a patent infringement suit against Petitioner, Frameless Hardware Company LLC (FHC) for infringement of U.S. Patent No. 9,074,413 (the ‘413 patent) directed to framing members...more
In OpenSky Industries, LLC v. VLSI Technology LLC, Under Secretary of Commerce for Intellectual Property, Katherine Vidal, issued a precedential decision regarding OpenSky’s violation of the Director’s express order and...more
Click-to-Call (Plaintiff/Patent Owner) filed an infringement suit against Ingenio (Defendant/Petitioner) and others. Defendant filed an IPR challenging the asserted claims. In the IPR petition, Petitioner asserted multiple...more
The institution rate for post-grant petitions in FY 2022 through the end of August 2022 (Oct. 1, 2021 through August 31, 2022) stands at 66% (706 instituted, 366 denied) compared to 59% in the previous fiscal year. The...more
In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings. The panelists stressed that...more
In LG Electronics v. Immervision, the Federal Circuit clarified the standard for evaluating whether a prior art reference includes an obvious typographical error. See 39 F.4th 1364, 1365 (Fed. Cir. 2022). Under this...more
On September 21, 2021 a PTAB panel granted a motion to strike two Exhibits as not timely submitted by the Petitioner in Samsung Electronics America, Inc. v. Kannuu PTY LTD, IPR2020-00738. Those exhibits were submitted by the...more
While creativity has its place in advocacy, it can be taken too far. The Petitioner learned this lesson the hard way in Unified Patents Inc. v. American Patents LLC, IPR2019-00482, Paper 132 (P.T.A.B. Aug. 3, 2022). In this...more
On June 10, 2022, the PTAB in Apple Inc. v. MemoryWeb LLC denied Apple’s “conditional” IPR petition but instituted review of Apple’s concurrently-filed PGR petition, finding that MemoryWeb’s U.S. Patent No. 11,017,020 (“the...more
On August 5, 2022, in Thader v. Vidal, the Federal Circuit affirmed that patent inventors must be natural persons, rejecting a technologist's attempt to name an artificial intelligence as the sole inventor on patent...more
On July 6, 2022, a panel of three Patent Trial and Appeal Board (“PTAB”) administrative patent judges granted institution of inter partes review (“IPR”) in STMicroelectronics, Inc. v. Trustees of Purdue University. See...more
On June 1, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“PTAB”) decisions in ClearOne, Inc. v. Shure Acquisition Holdings, Inc. regarding classification of the...more
On June 1, 2022, the Patent Trial and Appeal Board issued a Final Written Decision finding unpatentable three claims of AutoStore Technology AS’s (“AutoStore’s”) U.S. Patent No. 10,294,025 (“the ’025 patent”), while finding...more
On May 3, 2022, a panel of three PTAB administrative patent judges granted a motion for additional discovery in TCL Industries Holdings Co., Ltd. v. Parkervision, Inc., IPR2021-00985, (PTAB 2022), in which the PTAB deemed the...more
The Federal Circuit’s decision on May 27, 2022 in Arthrex Inc. v. Smith & Nephew Inc. et al., set forth that Patent Commissioner, Drew Hirshfeld, was within the bounds of the U.S. Supreme Court’s United States v. Arthrex...more
On May 9, 2022, the Patent Trial and Appeal Board denied Hillman Group, Inc.’s (“Hillman’s”) three petitions for inter partes review. See The Hillman Group, Inc. v. Hy-Ko Products Co. LLC, IPR2022-00168, -00169, and -00174....more
Within the past few weeks, the PTAB has issued new guidance addressing a number of important issues including the use of applicant admitted prior art, the Director review process, and changes to PTAB hearings going...more