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Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent

Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems. The PTAB found none of the...more

Reexamination Does not Reset the IPR Clock

In Apple v. IXI IP, the PTAB affirmed that the issuance of a reexamination certificate adding additional claims to a challenged patent does not reset the one-year time bar under § 315(b) to file a petition for inter partes...more

No Motivation to Combine May Not End the Obviousness Inquiry

In Polygroup Limited MCO v. Willis Electric Company, Ltd., the Federal Circuit reversed and remanded the PTAB’s findings of patentability in light of several obviousness arguments presented by the petitioner, concluding that...more

Intervening Court Decisions May Prevent Denial of Review Under § 325(d)

Under 35 U.S.C. § 325(d), the PTAB has discretion regarding whether to institute a covered business method review if the arguments presented in the petition are the same, or substantially the same, as those previously...more

Indefiniteness Again Leads To Unsuccessful IPR Challenge

The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other unpatentability grounds,...more

Clarified: Standing Requirements and Burden Shifting Framework in IPR Proceedings

Any person or entity may file an IPR proceeding to invalidate a patent, regardless of whether it faces a specific threat of infringement. An adverse decision in an IPR proceeding is appealable only to the Federal Circuit....more

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