The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced...more
A district court has ruled that the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) did not apply to invalidity grounds that relied on physical products. The court also declined to apply judicial estoppel, notwithstanding...more
In a recent decision issued in Louisiana-Pacific Corp. v. Huber Engineered Woods LLC, the Patent Trial and Appeal Board addressed the showing that a petitioner for inter partes review must make to demonstrate that an asserted...more
A district court has ruled that the exclusive statute for determining venue in patent cases, 28 U.S.C. § 1400(b), did not override the parties prior agreement on where suit could be brought. The court also ruled that transfer...more
In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness challenge by relying on evidence from an earlier litigation to establish objective indicia of nonobviousness.
In RTI...more
A district court has ruled that the statutory estoppel arising from an inter partes review (IPR) proceeding does not apply to anticipation and obviousness defenses that rely significantly on a physical device. The court also...more
A petition for inter partes review (IPR) has been denied because the petitioner failed to rebut the patent owner’s claim of priority raised in its preliminary response. In denying institution, the Patent Trial and Appeal...more
The District Court for the Northern District of West Virginia recently found method of treatment claims directed to treating a specific disease at a specific dose invalid for lack of written description based on the context...more
7/6/2020
/ Evidence ,
Hatch-Waxman ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Treatment Method Patents ,
Written Descriptions
Declaratory judgment (“DJ”) actions have fallen out of favor in patent cases in recent years. In 2011, DJ complaints made up approximately 11 percent of all patent cases filed that year. Last year, they made up less than 5...more
An accused infringer in a district court case could not take advantage of a prior claim construction ruling from an inter partes review (IPR) proceeding involving unasserted claims of the same patent. The Patent Trial and...more
Relying heavily on the Patent Trial and Appeal Board’s denial of an inter partes review (IPR) petition involving the patent-in-suit, a court in the Eastern District of Virginia recently refused to let the defendant amend its...more
When bringing a lawsuit for a declaratory judgment of non-infringement of a patent, careful pleading may allow plaintiffs to avoid the restrictions against later seeking inter partes review (IPR) of that patent, while also...more
- The Supreme Court ruled 7-2 in Thryv, Inc. v. Click-to-Call Technologies, LP, that the PTAB’s application of the one-year time limit for petitions for inter partes review, set out in 35 U.S.C. § 315(b), is not subject to...more
4/23/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
A panel at the Patent Trial and Appeal Board (the “Board”) recently considered whether a dispute over a patent’s priority date justified filing two petitions for inter partes review (IPR) against the same claims.
The...more
In a remanded inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB) held that Patent Owner Intellectual Ventures II LLC had successfully antedated a prior art reference asserted by Petitioner Motorola...more
Optis Wireless Technology, LLC filed a declaratory judgment action in the Eastern District of Texas seeking judgment that it complied with its fair, reasonable and non-discriminatory (FRAND) obligations when it offered a...more
Judge Gilstrap in the Eastern District of Texas has denied defendants’ motion to stay the post-trial phase of a patent infringement litigation pending ex parte reexamination where the request for reexamination was filed four...more
3/6/2020
/ Administrative Remedies ,
Collateral Attack ,
Ex Partes Reexamination ,
Jury Verdicts ,
Motion To Stay ,
Patent Act ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Post Trial Motions ,
USPTO
A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had...more
A panel at the Patent Trial and Appeal Board (PTAB) recently held that a certificate of correction fixing an error in a patent’s claim of priority did not apply retroactively in light of an already issued final written...more
A recent ruling from the Patent and Trial Appeal Board (PTAB) highlights the critical role that collateral estoppel (also known as issue preclusion) can play in inter partes review (IPR) proceedings. In a final written...more
Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more
2/3/2020
/ Estoppel ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
The Patent Trial and Appeal Board (PTAB) has rejected a patent owner’s argument that judicial estoppel should prevent a petitioner from making obviousness arguments in support of its petition for inter partes review (IPR)....more
The Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) decisions in two inter partes review (IPR) proceedings, finding that the PTAB applied the wrong standard when it presumed there was a nexus...more
Chief Judge Saris of the District of Massachusetts has granted-in-part a product manufacturer’s motion seeking summary judgment of claim preclusion based on patentee’s prior assertion of the same patent against a component...more
12/27/2019
/ Claim Preclusion ,
Defense Strategies ,
Intellectual Property Protection ,
Manufacturers ,
Motion for Summary Judgment ,
Noninfringement ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Suppliers
In inter partes review (IPR) proceedings of patents relating to printer technology, the Patent Trial and Appeal Board (PTAB) granted Patent Owner’s motion to compel testimony over Petitioner’s arguments that the information...more
12/27/2019
/ Attorney Communications ,
Discovery ,
FRCP 26 ,
Inter Partes Review (IPR) Proceeding ,
Motion to Compel ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Testimony ,
Work-Product Doctrine