The PTAB’s Standard Operating Procedure 2 permits the public to submit nominations for PTAB decisions that an individual believes should be designated as precedential or informative, or to suggest that a decision previously...more
Petitioner (Apple, Inc.) filed a petition to institute inter partes on a patent owned by Koss Corporation (Patent Owner). The PTAB considered six factors from Fintiv to assess whether to exercise authority to deny...more
The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...more
In Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-1393, Paper 19, (PTAB April, 7 2020), the Board denied briefing based on a lack of jurisdiction while the Precedential Opinion Panel request was...more
Although first briefly mentioned as a possibility in the August 2018 Trial Practice Guide Update (page 10), outside of one instance (Bio-Rad Labs. v. 10X Genomics, IPR2019-00567; -00568, August 8, 2019), PTAB discretionary...more
On December 17th, the PTAB designated two decisions applying the Fintiv factors as precedential. We will break these cases down in detail in the coming days on the PTAB Litigation Blog. Sotera Wireless, Inc. v. Masimo...more
On December 4th, the PTAB designated the following three cases precedential:
RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) -
This decision on remand from the...more
The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct....more
10/21/2020
/ §314(a) ,
America Invents Act ,
Cuozzo Speed Technologies v Lee ,
Denial of Institution ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Trial Practice Guidance
The Patent Trial and Appeal Board (PTAB) has added an online form to the USPTO website that allows any member of the public to nominate any PTAB decision for precedential or informative designation...more
In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more
As was previously noted here, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more
The PTAB recently designated a number of cases regarding procedures for determining whether a prior art reference is a “printed publication.” One opinion regarding the difference in burdens of proving “printed publication”...more
As we noted here, the PTAB recently designated two 35 U.S.C. § 325(d) cases precedential and one informative. Here is an in depth review of the informative decision.
On March 24, 2020,the PTAB designated two sections of...more
As we noted, the PTAB recently designated two 35 U.S.C. § 325(d) cases precedential and one informative. Here is an in depth review of a first of the precedential designated decisions.
On March 24, 2020, the PTAB...more
By Matt Johnson – Last week, the PTAB designated two 35 U.S.C. § 325(d) cases precedential and one informative. These cases discuss the Board’s process for deciding when to use their discretion to deny institution because a...more
On September 12, 2018, the PTAB in NHK Spring Co. v. Intri-Plex Techs., Inc. exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an IPR, despite the petition’s timely filing, due to a parallel district...more
A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a “printed publication”? On December 20, 2019, the...more
In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit has held that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board ("PTAB") were in violation of the Appointments Clause of the U.S....more
During an inter partes review (IPR), it is usually the Petitioner that raises grounds of unpatentability against a Motion to Amend that the Patent Owner must defend in front of the Patent Trial and Appeal Board (PTAB). Is the...more
Following up on a November 4th oral argument (accessible here) that focused on the Arthrex Appointments Clause issue, the Federal Circuit has requested additional briefing from Polaris, Kingston, and the U.S. regarding the...more
11/15/2019
/ Administrative Patent Judges ,
Administrative Procedure ,
Appeals ,
Appointments Clause ,
Inter Partes Review (IPR) Proceeding ,
Non-Judicial Settlement Agreements ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Retroactivity
Judge Dyk and Judge Newman disagree with the Arthrex remedy requiring rehearing. In Arthrex, the Federal Circuit panel of Judges Moore, Reyna, and Chen held the appointment of Administrative Patent Judges (APJs) was an...more
11/12/2019
/ Administrative Patent Judges ,
Administrative Procedure ,
Appointments Clause ,
Inter Partes Review (IPR) Proceeding ,
Non-Judicial Settlement Agreements ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Retroactivity ,
Statutory Interpretation
The PTAB has been very active in designating decisions precedential and informative in 2019. Here’s a recap of designations so far...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 Precedential Opinion Panel (“POP”) has concluded that the one-year time bar for filing an IPR petition under 35 U.S.C. § 315(b) is triggered by the service of a complaint alleging infringement even if “the serving...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