The District Court for the Northern District of California recently granted a defendant’s motion to bifurcate, ordering that issues related to PGR estoppel should be decided in a bench trial, while the remaining issues in the...more
The Northern District of Iowa recently held that a defendant’s motion for partial summary judgment of invalidity was barred after the PTAB issued final written decisions, regardless of when the motion was filed. The defendant...more
In a recent final written decision, the PTAB determined that a reference patent was not prior art, despite the petitioner’s post‑filing attempt to correct its petition. While the petitioner argued that it intended to rely on...more
In ruling on a recent motion to strike, a judge in the Eastern District of Texas permitted a damages expert to rely on a damages theory based on defendant’s “avoided costs,” holding that this theory did not run afoul of the...more
The Federal Circuit recently vacated a decision by the Patent Trial and Appeal Board after concluding that the board’s analysis of licensing evidence offered as a secondary consideration of nonobviousness constituted legal...more
8/6/2025
/ Appeals ,
CAFC ,
Evidence ,
License Agreements ,
Nonobvious ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Vacated
A Northern District of California judge recently granted a motion to reconsider his summary judgment ruling that defendant was barred from raising certain “device art” due to IPR estoppel under 35 U.S.C. § 315(e)(2). In the...more
In a recent decision designated as Informative, the USPTO Director determined that the Patent Trial and Appeal Board abused its discretion by instituting two inter partes review proceedings challenging the same patent, based...more
In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was...more
The Patent Trial and Appeal Board recently declined to institute a petition for IPR that was filed on the same day that the petitioner filed another petition challenging the same claims of the same patent. The board was not...more
In an institution decision following the USPTO’s withdrawal of its Fintiv Memo, the board addressed discretionary denial of an IPR under Fintiv in view of a parallel ITC investigation. The board noted it would not consider...more
The USPTO Director vacated the board’s decision to institute inter partes review based on an erroneous application of the Fintiv factors. Specifically, the Director found that the board placed too much emphasis on...more
The Central District of California denied a defendant’s motion to dismiss or transfer plaintiff’s first-filed declaratory judgement action based on defendant’s later-filed patent infringement suit in Wisconsin. Though suit...more
In a recent newsflash, we discussed the USPTO’s withdrawal of its 2022 memorandum that detailed how the PTAB would exercise its discretion to deny petitions for inter partes review and post-grant review. New guidance from the...more
On February 28, 2025, the USPTO announced that it was rescinding former Director Vidal’s 2022 memorandum on discretionary denials by the Patent Trial and Appeal Board. The 2022 memorandum effectively narrowed the application...more
The District of Arizona recently held that a plaintiff’s failure to mark patented products during the time period that marking was required barred it from recovering all pre-notice damages, including for a period of time when...more
The Patent Trial and Appeal Board granted institution of inter partes review of a patent directed to delivery of targeted television advertisements. The board rejected patent owner’s argument that a lack of particularity as...more
The Unified Patent Court (UPC) aims to provide expeditious decisions for its litigants. That means that there is a higher bar for obtaining extensions of time. As exemplified in BMW v. ITCiCo, the UPC’s reluctance to grant...more
The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more
The Patent Trial and Appeal Board rejected a patent owner’s assertion that petitioner should have named a third party, which was a defendant in a related district court patent infringement litigation and a party to a joint...more
A district court recently refused to exclude testimony regarding consumer surveys conducted by a design patent expert, holding instead that the consumer surveys may be probative of how an ordinary observer would view the...more
The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more
10/30/2024
/ Discovery ,
Evidence ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Motion to Compel ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Semiconductors
The Central District of California ruled that the heightened pleading standard of Federal Rule of Civil Procedure Rule 9(b) applies to all three prongs of a false patent marking claim, including the third prong, competitive...more
Our newsletter reflects the focus of Akin’s cross-practice autonomous systems and advanced mobility team on developments in the regulatory, policy, trade, intellectual property, and cybersecurity and privacy spaces....more
The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more
9/24/2024
/ America Invents Act ,
Duty of Candor ,
Ethics ,
Good Faith ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patentability Search ,
Patents ,
Prior Art ,
Sanctions ,
USPTO
The Western District of Texas granted a motion to stay a patent infringement lawsuit pending inter partes review not only because doing so would simplify the issues in the still-early litigation and reduce the burden on the...more