News & Analysis as of

§ 315(b) Inter Partes Review (IPR) Proceeding

McDermott Will & Emery

No Need for Unnecessary RPI Determinations

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The US Patent & Trademark Office Director partially vacated the Patent Trial & Appeal Board’s real-party-in-interest (RPI) determination because that determination was not necessary to resolve the underlying proceeding....more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Atlanta Gas Light Co. v. Bennett Regulator Guards,...

Atlanta Gas petitioned for inter partes review of Bennett’s ’029 patent. The Board initially rejected Bennett’s argument that Atlanta Gas was time barred from petitioning for inter partes review under 35 U.S.C. § 315(b) and...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Jones Day

Joinder Denied For Petitioner Whose Invalidity Case Was Dismissed With Prejudice

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In the PTAB’s recent decision in Code 200 v. Bright Data Ltd., IPR2021-01503, Paper No. 13 (PTAB Mar. 14, 2022), the PTAB expounded upon the circumstances in which joinder of a “me-too” case under § 315(b) was not...more

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

PTAB Strategies and Insights - March 2021: Is The Sliver of Light a Door Opening or Closing?

From the beginning of AIA proceedings, Petitioners that have lost at institution decision phase have tried using Mandamus to circumvent the statutory lack of appeal from institution decisions. Mylan Laboratories Ltd. v....more

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

PTAB Strategies and Insights - March 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2021 #3

Uniloc 2017 LLC v. Facebook Inc., Appeal Nos. 2019-1688, -1689 (Fed. Cir. Mar. 9, 2021) In this week’s Case of the Week, Uniloc appealed from two consolidated IPR decisions finding multiple claims unpatentable as obvious....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

Haug Partners LLP

2020 Year in Review: Noteworthy Patent Precedent in an Unprecedented Year

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The year 2020 brought significant change to many sectors of life, and patent law was no exception. Throughout the year, the U.S. Supreme Court and the Federal Circuit handed down several notable decisions that have and will...more

Snell & Wilmer

IPRs Terminated by PTAB After Petitioner Failed to Name Client as RPI

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In RPX Corp. v. Applications in Internet Time LLC, the Patent Trial and Appeal Board (“PTAB”) held in a precedential opinion that three inter partes reviews (“IPRs”) were time-barred under 35 U.S.C. § 315(b) because the...more

Jones Day

Filing Date Motion Granted Due To COVID-19

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NeuMoDx Molecular, Inc., (Petitioner) who was otherwise barred from pursuing two IPR proceedings regarding patents owned by HandyLab, Inc. (Patent Owner) under 35 U.S.C. § 315(b)’s one year deadline, filed a Motion to Change...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

Jones Day

District Court Issues Sanctions for Patent Owner’s Shapeshifting Arguments at the PTAB

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Although infrequently awarded, district courts are empowered to issue sanctions for behavior at the PTAB that they deem “exceptional” under Octane Fitness. In Game and Technology Co., Ltd. v. Wargaming Group Limited,...more

Jones Day

Federal Circuit’s Applications in Internet Time Decision Applied

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Throughout the Patent Trial and Appeal Board’s (“PTAB”) history, patent owners have tried to leverage a petitioner’s alleged failure to name all real parties-in-interest (“RPIs”) as a way to achieve denial of an inter partes...more

Jones Day

PTAB Reconsiders Unappealable § 315(b) Issue On Remand

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Current PTAB-relevant case law dictates: 35 U.S.C. § 315(b) “unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in...more

Knobbe Martens

Joining an IPR Triggers IPR Estoppel Only for Instituted Grounds

Knobbe Martens on

NETWORK-1 TECHNOLOGIES, INC. v. HEWLETT-PACKARD COMPANY, HEWLETT PACKARD ENTERPRISE COMPANY - Before Prost, Newman, and Bryson. Appeal from the United States District Court for the Eastern District of Texas. Summary: A...more

Haug Partners LLP

Facebook v. Windy City - Federal Circuit Justifies Judicial Review of PTAB Joinder Decisions at the Institution Stage

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WHAT DO WE KNOW? 1. On September 4, 2020, the Federal Circuit modified and reissued its March 18, 2020 Facebook v. Windy City opinion to address the Supreme Court’s intervening April 20, 2020 Thryv v. Click-to-Call opinion...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

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

Section 315(a) Calls At Institution Cannot Be Reviewed

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Recently, we reported about the Supreme Court’s decision holding that the AIA’s “no appeal” provision in 35 U.S.C. § 314(d) means that the PTAB’s decision not to institute IPR because a petition is time barred under 35 U.S.C....more

Knobbe Martens

PTAB Cannot Shortcut the Two-Step Obviousness Analysis

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FITBIT, INC. v. VALENCELL, INC. Before Newman, Dyk, and Reyna. Appeal from Patent Trial and Appeal Board. Summary: Notwithstanding its rejection of the Petitioner’s proposed claim construction, the PTAB may not end an...more

McDermott Will & Emery

Too Early to Hang Up on Click-to-Call

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In the wake of its six-week-old decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court of the United States has now granted certiorari in an appeal of another case arising from a Federal Circuit appeal...more

Bass, Berry & Sims PLC

Navigating the Appeal Bar in PTAB Cases

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The U.S. Supreme Court recently construed the § 314(d) appeal bar in inter partes reviews (IPRs) as precluding appeals from time-bar determinations per § 315(b). Thryv, Inc. v. Click-to-Call Techs., LP, 140 S. Ct. 1367...more

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