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
In Samsung Electronics Co., Ltd. v. Netlist, Inc., the PTAB determined that a time-barred third party was not a real party in interest (“RPI”) and granted institution. IPR2022-00615, Paper 20 (Oct. 19, 2022) at 19...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
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
Throughout the Patent Trial and Appeal Board’s (“PTAB”) history, patent owners have tried to leverage a petitioner’s alleged failure to name all real parties-in-interest (“RPIs”) as a way to achieve denial of an inter partes...more
Recently, we reported about the Supreme Court’s decision holding that the AIA’s “no appeal” provision in 35 U.S.C. § 314(d) means that the PTAB’s decision not to institute IPR because a petition is time barred under 35 U.S.C....more
The Federal Circuit’s decision in ESIP Series 2 v. Puzhen Life USA, LLC, No. 19-1659, held that the “no appeal” provision found in 35 U.S.C. § 314(d) (“Section 314(d)”) bars judicial review of PTAB determinations regarding...more
In two related decisions, the Federal Circuit held that the Patent Owner, Acoustic Technology, Inc. (“Acoustic”) waived its time-bar challenges under 35 U.S.C. § 315(b) (“Section 315(b)”) by failing to assert them in the IPR...more
Determining the Real Party-in-Interest (“RPI”) in an IPR can have critical implications for estoppel. A patent owner can prevent institution of an IPR by showing that an RPI has previously “filed a civil action challenging...more
Last year, this blog discussed various strategic considerations for litigants seeking declarations of invalidity in district court actions to avoid being precluded from also seeking inter partes or other post-grant review...more
10/14/2019
/ Counterclaims ,
Declaratory Judgments ,
Inter Partes Review (IPR) Proceeding ,
Mylan Pharmaceuticals ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Pharmaceutical Patents ,
Post-Grant Review ,
Real Party in Interest ,
Time-Barred Claims
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
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
In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section...more
6/28/2019
/ § 315(b) ,
Appeals ,
Chevron Deference ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Mergers ,
Patent Infringement ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Time-Barred Claims
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 an order designated precedential, the PTAB terminated an instituted IPR proceeding after the petitioner failed to establish that no real parties in interest (“RPI”) or privies had been served with a complaint more than one...more
On January 31, 2019, the Patent Trial and Appeal Board issued a decision granting institution of inter partes review in Sling TV, L.L.C. v. Realtime Adaptive Streaming, L.L.C., No. IPR2018-01331, where the Board held that a...more