News & Analysis as of

§314(a) Inter Partes Review (IPR) Proceeding

Jones Day

Director Vidal Reels In Discretionary Denials Under Section 314(a)

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Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review. In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent...more

McDermott Will & Emery

PTO Director Lays Out Limits on “Roadmapping” as Factor for Discretionary IPR Denials

McDermott Will & Emery on

Exercising its discretion under 35 U.S.C. § 314(a), the Patent Trial & Appeal Board (Board) denied institution of two inter partes reviews (IPRs) based on its understanding of its own precedential 2017 decision in Gen....more

Stinson LLP

USPTO Provides Interim Guidance on PTAB Discretionary Denials Under Fintiv

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On June 22, 2022, the U.S. Patent and Trademark Office (USPTO) announced new interim guidance regarding discretionary denials of patent challenges at the Patent Trial and Appeal Board (PTAB) based on parallel litigation. The...more

Jones Day

PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence

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It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions.  The PTAB has discretionarily denied IPR petitions, for example, due...more

Jones Day

Awkwardly Divided Petitions Triggers § 314(a) Denials

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In Fantasia Trading LLC v. Cognipower LLC, IPR2021-00070, Paper 21 (May 20, 2021), the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) where Petitioner Fantasia Trading LLC failed to...more

Jones Day

Thin Fintiv Factor Four Stipulation Sufficient For Institution

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On April 30, 2021, the PTAB instituted IPR trials based on petitions by Facebook, Inc. (“Petitioner”) challenging certain claims of U.S. Patent No. 8,645,300 (“300 Patent”), owned by USC IP Partnership, L.P. (“Patent Owner”)...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Thryv, Inc. v. Click-To-Call Technologies, Inc.,...

In Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), the Supreme Court held that patent owners cannot appeal determinations by the Patent Trial and Appeal Board declining to apply the time bar of 35 U.S.C....more

Jones Day

Jones Day’s Fintiv-ITC Developments Tracker

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Although first briefly mentioned as a possibility in the August 2018 Trial Practice Guide Update (page 10), outside of one instance (Bio-Rad Labs. v. 10X Genomics, IPR2019-00567; -00568, August 8, 2019), PTAB discretionary...more

McDermott Will & Emery

PTAB Designates Two Precedential Opinions for Evaluating Impact of District Court Litigations on Discretionary Denial under §...

In the wake of its May 13, 2020, precedential decision in Apple v. Fintiv, Inc., the Patent Trial and Appeal Board designated as precedential two additional decisions that weigh the Fintiv factors. In Fintiv, the Board...more

Bass, Berry & Sims PLC

The PTAB Provides More Guidance on Denying Petitions with Parallel District Court Proceedings

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On December 17, the Patent Trial and Appeal Board (PTAB) designated as precedential two decisions concerning the PTAB’s discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review (IPR) when there is a...more

Akin Gump Strauss Hauer & Feld LLP

Agreement Not to Raise Duplicative Arguments in District Court Key to Avoiding Discretionary Denial of IPR Petition

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

Bass, Berry & Sims PLC

Three Precedential Decisions Show the PTAB Busting RPX's IPR-Filing Scheme and Using § 314(a) to Deny Joinder

Bass, Berry & Sims PLC on

On December 4, the USPTO’s Patent Trial and Appeal Board (PTAB) designated three decisions precedential, with two addressing real party in interest (RPI) and one addressing follow-on petitions under 35 U.S.C. § 314(a). In one...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Remains Unwilling to Deny Inter Partes Review Based on a Contractual Forum-Selection Clause

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

Ladas & Parry LLP

Thryv Inc. v. Click-to-call Technologies LP

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The question of whether the United States Court of Appeals for the Federal Circuit Court of Appeals has any right to examine a decision of the Patent Trial and Appeal Board (PTAB) to institute inter partes review or post...more

Jones Day

Joinder Bid After Prior Petition Denial Fails

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After being sued by Uniloc in April 2018 for infringement of U.S. Patent No. 6,467,088 (“Reconfiguration Manager for Controlling Upgrades of Electronic Devices”), Apple challenged claims 1-21 of that patent at the PTAB in...more

Womble Bond Dickinson

An Initial Statistical Analysis of the PTAB’s Recent “NHK-Fintiv Factor” Institution Decisions

Womble Bond Dickinson on

The PTAB has recently garnered significant attention for denying a spate of IPR petitions in which the challenged patent is also subject to parallel district court litigation. In these cases, the PTAB has invoked the...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (August 31-September 4): Same-Party Joinder Still Not Thryv-ing

Last week was September Court week, marking the unofficial end of summer for Federal Circuit practitioners. The Court issued a total of 25 decisions, including 8 Rule 36 summary affirmances in cases argued last week, as well...more

Morrison & Foerster LLP - Federal Circuitry

Orders of Interest Roundup

At Federal Circuitry blog, we like to check in once in a while on what the Federal Circuit is doing in its orders that don’t get posted on the public website. Those orders often offer nuggets about practice at the Federal...more

Knobbe Martens

Fintiv Is the New Nhk Springs: New Informative Decisions Sharpen the PTAB’s Focus on Discretionary Denials and Provide Guideposts...

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The PTAB has been grappling with how to manage IPR petitions for patents that are also being challenged in federal district court, particularly when the district court is set to determine the patent validity prior to the...more

Dunlap Bennett & Ludwig PLLC

Most Notable Patent Decisions in the First Half of 2020

In the first half of 2020, several notable decisions further shaped the course of patent law, with rulings from the Supreme Court and Federal Circuit impacting PTAB proceedings, as described below...more

Jones Day

Follow On Petition Denied for Implicit “Significant Relationship”

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In Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550 (PTAB March 17, 2020) (Paper 8), the PTAB denied institution of inter partes review under 35 U.S.C. § 314, exercising its discretion to deny “follow-on petitions”...more

McDermott Will & Emery

Delicate Balance: Details of Parallel Proceeding Tip Scales for Discretionary Denial

McDermott Will & Emery on

The Patent Trial and Appeal Board (Board) designated two decisions informative as they relate to weighing factors for determining how a parallel district court proceeding may impact the Board’s determination of whether to...more

Jones Day

Focus on Fintiv Factor Four

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In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more

Bass, Berry & Sims PLC

PTAB Provides More Guidance on IPR Institution Discretion Under § 314(a)

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On July 13, the USPTO’s Patent Trial and Appeal Board (PTAB or Board) designated two decisions informative that apply the NHK factors for determining whether the PTAB will exercise its discretion to deny inter partes review...more

Mintz - Intellectual Property Viewpoints

IPR and Fast-Moving District Court Litigation: PTAB Formalizes the Analysis for Balancing Efficiency and Fairness

The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.” With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness...more

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