The Patent Trial and Appeal Board (“PTAB” or “Board”) recently denied inter partes review (IPR) of an electrocardiography monitor patent under 35 U.S.C. §325(d), finding that the same or substantially the same prior art or...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
In a previous post from July 2021, we discussed the interim process for Director review in PTAB proceedings post-Arthrex. Since then, only three out of over 175 requests for Director review of a Final Written Decision 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
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 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
The PTAB recently held that the General Plastic factors weighed in favor of denying a follow-on IPR petition filed after the Patent Owner filed a preliminary response to an earlier petition challenging the same patent (U.S....more
In a recent precedential decision, the PTAB emphasized that objective indicia of nonobviousness must have a nexus to the claimed invention. Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, Paper 33 (P.T.A.B. Jan. 24,...more
The PTAB and District Courts do not always see eye to eye when it comes to prior art. On August 21, 2020, the Board issued a trio of final written decisions refusing to invalidate the claims of three patents, two of which...more
On June 18, 2020, the PTAB denied an IPR petition because the Petitioner failed to sufficiently construe the means-plus-limitations of the challenged claims.
Mattersight Corporation (“Mattersight”) owns the challenged...more
On March 30, 2020, the Federal Circuit relied on Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) to vacate and remand several related PTAB decisions, including in proceedings where the patent owner did...more
On January 31, 2020, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (“PTAB”) final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits and questioned the...more
2/15/2020
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
USPTO ,
Vacated
Following on Judge Newman’s dissent in Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., parties are seeking to preserve their rights by challenging the Federal Circuit’s holding that a party’s failure to raise...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
Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding video data. The...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
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 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several...more
On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more
8/2/2018
/ Corporate Counsel ,
Evidence ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Oral Argument ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Professional Conferences ,
Subject Matter Experts (SMEs) ,
USPTO ,
Young Lawyers
The PTAB recently clarified eligibility for a covered business method review (CBM). See Xerox Corp. v. Bytemark, Inc., No. CBM2018-00011 (P.T.A.B. July 12, 2018) (Paper 12). To establish standing for CBM review, a petitioner...more
After IPR institution, a party may file a motion to submit supplemental information so long as (1) the party requests authorization to file the motion within a month of the date the trial was instituted, and (2) the...more
On March 21, 2018 the PTAB issued a press release announcing that two decisions denying review under 35 U.S.C. § 325(d) are designated as informative:
Kayak Software Corp.v. International Business Machines Corp.,...more
4/5/2018
/ Claim Construction ,
Evidence ,
Final Written Decisions ,
Obviousness ,
Patent Examinations ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Prosecution History Estoppel ,
Section 325(d)
Patent applicants often draft claims to cover various ranges of physical or chemical characteristics. Of primary concern during prosecution are prior art documents that disclose similar, but not overlapping, ranges. In In re...more
Whether a process step in product claims is afforded patentable weight has been an issue gaining more attention recently. The Federal Circuit weighs in on the topic in In re Nordt Dev. Co., LLC, No. 2017-1445, 2018 WL 774097...more