In a recent inter partes review proceeding, the Patent Trial and Appeal Board relied on compelling evidence of secondary considerations to hold all challenged claims not unpatentable under 35 U.S.C. § 103. Specifically, the...more
In an inter partes review, the Patent Trial and Appeal Board applied guidance from the U.S. Patent and Trademark Office and declined to consider an obviousness ground that was based on admissions about prior art in the...more
In two related inter partes review proceedings, the Patent Trial and Appeal Board granted a petitioner’s motion to exclude the declaration of an inventor because the patent owner failed to make him available for...more
Applying recent Federal Circuit precedent requiring language evincing a present conveyance of patent rights, a district court in the Western District of Pennsylvania found that the contractual language “shall become the...more
A judge in the Northern District of Georgia has granted a defendant’s motion to dismiss a patent infringement case for failure to state a claim under Rule 12(b)(6). The court found that the complaint failed to meet the...more
The Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence,...more
Disputes as to the licensing of standard-essential patents (SEP) and determination of fair, reasonable and non-discriminatory (FRAND) terms are typically resolved through either negotiation or litigation in national courts....more
A judge in the Eastern District of Virginia recently held that cancellation of independent claims in an inter partes review (IPR) did not preclude the plaintiff from asserting infringement based on the doctrine of equivalents...more
More than a year after its last precedential designation, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board has held that Fedwire confirmation of payment constitutes sufficient evidence that the...more
Successfully licensing standard-essential patents (SEPs) is key to a company’s ability to manufacture and sell products that practice a standard. With revolutionary advances in technology on the horizon, licensing of SEPs...more
A panel of the Patent Trial and Appeal Board instituted inter partes review of a patent, rejecting the patent owner’s assertion that the petitioner’s obviousness arguments were collaterally estopped by a district court’s...more
In a series of related inter partes review proceedings, the Patent Trial and Appeal Board recently granted a petitioner’s motion to strike the sworn affidavit of a witness who was unwilling to submit to cross-examination. In...more
In a rare move, the interim Director of the U.S. Patent Office granted review of a final written decision in an inter partes review proceeding. In its request for Director review, the patent owner argued that the Patent Trial...more
The Eastern District of Texas has rejected a plaintiff’s argument that if a patent owner concedes in an inter partes review (IPR) that a prior art reference discloses all elements of a patent claim, the reference necessarily...more
During a Markman hearing, a judge in the Eastern District of North Carolina denied a plaintiff’s request that the defendant be judicially estopped from arguing claim constructions that were different from positions the...more
Inter partes review (IPR) proceedings can give rise to statutory and collateral estoppel. But these two bases for estoppel attach at different times, which can lead to asymmetrical outcomes in related district court...more
The Supreme Court issued its decision in United States v. Arthrex, Inc., which considered whether Administrative Patent Judges’ (APJs) authority to issue decisions in inter partes reviews on behalf of the executive branch is...more
6/22/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc
Key Points
- This settlement resolves multiple German lawsuits Nokia filed against Daimler asserting SEPs and Daimler’s complaint against Nokia before the European Commission.
- Daimler argued Nokia’s licensing...more
The Patent Trial and Appeal Board denied institution of a petition for inter partes review (IPR), in part because an allegedly anticipatory prior art patent lacked an element of what the board determined was a limiting...more
The Patent Trial and Appeal Board denied a patent owner’s motion for additional discovery of documents—from petitioners, real parties-in-interest, and third parties—because patent owner failed to show that such discovery...more
A panel at the Patent Trial and Appeal Board recently considered whether a petitioner was estopped from bringing an inter partes review (IPR) based on a judgment in a previous interference proceeding. ...more
Objective evidence of nonobviousness traces its roots to 19th century case law from the U.S. Supreme Court.
The analysis of such secondary considerations as commercial success, failure of others, and long-felt but...more
The Patent Trial and Appeal Board recently granted a patent owner’s request to seek a certificate of correction for certain claims of a patent undergoing an inter partes review (“IPR”). In granting the request, the board...more
In the last two years, the Patent Trial and Appeal Board has issued two precedential decisions (in NHK and Fintiv) that set forth the board’s test for determining whether to deny an inter partes review (IPR) petition based on...more
12/23/2020
/ §314(a) ,
Claim Construction ,
Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Trial Practice Guidance
In a recent decision granting institution of an inter partes review (IPR), the Patent Trial and Appeal Board reconfirmed that it will not deny an IPR petition just because the parties previously agreed to resolve their...more