Parties in inter partes review proceedings often dispute whether a reply to a patent owner response is truly responsive or instead an attempt to introduce new arguments that are not reasonably tied to those set out in the...more
In a precedential opinion issued this week, the Federal Circuit held that Applicant Admitted Prior Art (“AAPA”) does not constitute “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b) and thus...more
In a recent decision, the Federal Circuit held that the PTAB violated the Administrative Procedures Act (“APA”) by adopting in its final written decision a claim construction that neither party had proposed. In Qualcomm Inc....more
In a case decided yesterday, the Federal Circuit found that the Board abused its discretion by denying Honeywell’s request to file a motion for leave to file a certificate of correction. Honeywell International Inc. v. Arkema...more
AVX Corp. (“AVX”) filed a Petition for Inter Partes Review challenging all claims of U.S. 6,661,639 owned by Presidio Components, Inc. (Presidio). The Board found claims 13-16 and 18 unpatentable and affirmed the...more
The PTAB designated as precedential a recent order regarding Motions to Amend. Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) (Designated Precedential: Mar. 7, 2019). The order sets...more
The Federal Circuit issued an en banc decision in Click-to-Call Technologies, LP v. Ingenio, Inc, Yellow Pages.com, LLC (Case No. 2015-1242), finding that a voluntary dismissal without prejudice of a lawsuit does not reset...more
The PTAB has declined to institute proceedings on challenged claims on the basis that one or more of the challenged claims is indefinite. See, e.g., IPR2015-00662, IPR2013-00036. While this may seem like a positive outcome...more
Petitioners are best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to (1) the limited space Petitioner has to make its arguments, and (2) estoppel based...more
The Supreme Court issued two decisions today in the cases of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., and SAS Institute Inc. v. Iancu, addressing inter partes review (IPR). In Oil States, the...more
4/25/2018
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Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
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Patents ,
Post-Grant Review ,
SCOTUS ,
Seventh Amendment ,
USPTO
In a recent Northern District of California case, the Court granted a restraining order requiring the defendant to dismiss a set of PTAB petitions. Dodocase VR, Inc. v. Merchsource, LLC, et al., No. 17-cv-07088-EDL (N.D....more
Defendant Hewlett Packard filed a Petition for IPR challenging claims of U.S. Patent No. 6,218,930 as invalid in view of two prior art references. On the same day Defendant requested joinder with an earlier filed IPR that...more
On Tuesday, August 30, the Federal Circuit vacated the Patent Trial and Appeal Board’s denial of a motion to amend. Veritas Techs. LLC v. Veeam Software Corp., Case No. 15-1894. The Federal Circuit found that “the Board was...more
Successful motions to amend in AIA trials continue to be rare. The Patent Trial and Appeal Board conducted and published a Motion to Amend Study this year: as of April 30, 2016, the Board had completed 1539 trials; 192 of...more
On Monday, June 20, the Supreme Court issued a much anticipated decision upholding the PTAB's use of the Broadest Reasonable Interpretation standard for claim construction and confirming that the decision to institute is...more
The PTAB recently relied on the Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp. in refusing to institute a Covered Business Method review of a patent for a system for managing personal electronic information....more
The Patent Trial and Appeal Board ("Board") recently granted a motion to amend. A successful motion to amend is rare; only six have been granted to date. The case is Shinn Fu Co. of America Inc. et al. v. The Tire Hanger...more