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Motion to Amend: Much to Admire?

Motions to amend (MTA) are becoming a more frequently used tool for patent owners litigating before the Patent Trial and Appeal Board (PTAB). When a patent is being challenged in an inter partes review (IPR) or post-grant...more

PTAB Permits Incorporation by Reference in Expert Declaration

The first step in requesting an inter partes review (IPR) of a granted patent is the filing of a petition before the Patent Trial and Appeal Board (PTAB), in which the petitioner states the grounds for the invalidity of the...more

One Party, One Voice

An inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) is a proceeding of the petitioner versus the patent owner. In a situation where the petitioner or the patent owner consists of multiple entities,...more

Creative COVID-Time Deposition Procedure

Depositions for proceedings before the Patent Trial and Appeal Board (PTAB) are usually taken in the U.S. See 37 C.F.R. § 42.53(b)(2), (b)(3). Furthermore, many foreign jurisdictions have restrictions on taking depositions...more

Staying Still: District Court Extends Stay Pending Appeal

District courts commonly stay patent litigation cases pending inter parties review (IPR) that assesses the validity of the patents-in-suit before the Patent Trial and Appeal Board (PTAB). Such stay may be lifted or extended...more

How Does the PTAB § 314(a)?

The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of any inter partes review (IPR). Such discretionary denial may be based on a variety of considerations, such as the existence of an ongoing...more

June Boardside Chat: New Developments in AIA Trials

On June 11, 2020, the Patent Trial and Appeal Board (PTAB) held a Boardside Chat webinar to discuss new developments in AIA trials. The discussion featured panelists Vice Chief Judge Michael Tierney and Lead Judge William...more

INFORMATIVE: Conference Paper Public Accessibility – Insufficient Proof

As was previously noted here, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more

Judges Removable-At-Will is Better than No PTAB At All

On March 23, 2020, the Federal Circuit issued a per curiam order denying rehearing and rehearing en banc in Arthrex. See Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order Denying Rehearing and Rehearing En Banc, Dkt....more

District Court Awards Fees After PTAB Cancels Claims

Patent litigation can be quite costly to defend against, that’s no secret. But when can a prevailing defendant recover its attorneys’ fees from the plaintiff, patent holder, and under what circumstances? Under the “American...more

ITC Denies Request for Early Disposition That Requires Third Party Discovery

The ITC recently issued an order denying Respondents’ request to use the Early Disposition Program. Certain Wireless Communication Devices and Related Components Thereof, Inv. 337-TA-1180 (October 10, 2019). The Commission...more

Imported Articles Satisfy the ITC’s Domestic Industry Requirement When Domestic Value-Add is Shown

In a recently issued Initial Determination, ALJ McNamara ruled that beer containers imported into the U.S. satisfied the domestic industry requirement when the Complainants were able to show significant domestic value-add....more

POP: What Makes A Book A “Printed Publication”?

A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a “printed publication”? On December 20, 2019, the...more

ITC Invalidates Road Paving Machine Patent for Being An Abstract Idea

In a recently issued Commission Opinion, the ITC affirmed the ALJ’s finding that the asserted claims of U.S. Patent No. 9,045,871 (the ’871 patent) are invalid as directed to an abstract idea. Certain Road Construction...more

POP: Can PTAB Raise Ground of Unpatentability In Addressing Motion to Amend?

During an inter partes review (IPR), it is usually the Petitioner that raises grounds of unpatentability against a Motion to Amend that the Patent Owner must defend in front of the Patent Trial and Appeal Board (PTAB). Is the...more

ITC Imposes Fine for Violating Cease and Desist Order

In a recent Enforcement Initial Determination, ALJ Shaw held that Sony had violated previously issued cease and desist orders (“CDOs”) and determined that the appropriate penalty was a fine of $210,134 – Sony’s net profit...more

ITC Issues GEO to Protect Domestic Manufacturer From Anonymous Online Sales

In a recent Commission opinion, the ITC reviewed and affirmed ALJ Bullock’s Initial Determination (ID), and issued a general exclusion order (“GEO”). Certain Self-Anchoring Beverage Containers, Inv. 337-TA-1092, Comm’n Op....more

Should You File A “Copycat” IPR Petition?

If you don’t have new grounds to add, you may as well copycat. On September 4, 2019, the PTAB denied Microsoft’s petition requesting inter partes review (“IPR”) of U.S. Patent No. 7,167,487 (“the ’487 patent”); furthermore,...more

ITC Excludes Expert Testimony for Violation of Ground Rules

In a recently issued order, ALJ Lord granted-in-part and denied-in-part Respondents’ motion in limine to exclude certain testimony of Complainants’ expert. Certain Radio Frequency Microneedle Dermatological Treatment Devices...more

SDNY Rules Forum Selection Clause Does Not Bar IPR

On July 2, 2019, Judge Cote of the Southern District of New York issued an opinion that denied a motion for a preliminary injunction ordering the defendant to withdraw its petitions for inter parties review (“IPR”) at the...more

ITC Does Not Strictly Enforce the Daubert Standard for Expert Testimony

In a recently issued pair of orders, ALJ Lord denied both Respondents’ and Complainants’ motions in limine to exclude certain expert testimony. Certain Radio Frequency Microneedle Dermatological Treatment Devices and...more

ITC Refuses to Include in Exhibits An Email Not Timely Produced During Discovery

On April 8, 2019, ALJ Cheney issued an order denying the addition of an email to the exhibit list at the eve of the evidentiary hearing. Certain Strontium-Rubidium Radioisotope Infusion Systems, and Components Thereof...more

ITC Allows Respondent to Amend Response to Complaint to Include Defense of Inequitable Conduct

In a recently issued order, Chief ALJ Bullock granted Respondent’s motion to amend its Response to the Complaint almost nine months after the investigation had been instituted to include the defense of inequitable conduct in...more

ITC Concludes Early Disposition Program Not Appropriate for Subject Matter Eligibility and Domestic Industry

On April 2, 2019, the Commission issued an order denying Respondents’ requests to use the Early Disposition Program. Certain Data Transmission Devices, Components Thereof, Associated Software, and Products Containing the...more

Petitioner Must Explain Differences Among Five Concurrent IPR Petitions

On April 22, 2019, the PTAB issued an order that the Petitioner must explain the differences among its five petitions to institute inter partes review over the same patent, and that the Patent Owner may respond as to whether...more

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