The PTAB recently held that the General Plastic factors weighed in favor of denying a follow-on IPR petition filed after the Patent Owner filed a preliminary response to an earlier petition challenging the same patent (U.S....more
The results of a recent update to the PTAB Multiple Petition Study show Petitioners face an uphill battle when attempting to utilize a multiple petition strategy. These results, discussed during the December 10, 2020...more
The US Patent and Trademark Office (USPTO) has now made another rules change to counter the charge that it is a patent “death squad.” The upcoming change to the rules governing inter partes reviews (IPRs) and post-grant...more
On December 4th, the PTAB designated the following three cases precedential: RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) - This decision on remand from the...more
In 2012, Congress enacted the American Invents Act (“AIA”) for the purpose of “establish[ing] a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive...more
What Quanta Storage and Qualcomm mean for Taiwan's businesses. Antitrust litigation in the US continues to focus on competitor interactions. Companies that participate in multiple levels of a supply chain must consider how...more
Maybe it was the end of summer and the start of fall, or the kids (kind of) going back to school. But whatever it was, last week the Court issued only one precedential decision, in a veteran’s benefits case. All said, the...more
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
The PTAB denied institution of a follow on petition filed five months after an initial petition by the same petitioner, even though the two petitions were directed to different claims. The Board found no persuasive...more
Addressing the scope of the Patent Trial and Appeal Board’s (“Board”) discretion under 35 U.S.C. § 325(d) to deny institution, the Board designated three opinions as precedential or informative. Precedential Opinions: In...more
In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more
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
Relying on 35 U.S.C. § 314(a), the Patent Trial and Appeal Board has articulated its reluctance to review “follow-on” petitions challenging the validity of patents that have been previously subjected to inter partes review....more
Following the United States Patent and Trademark Office’s (USPTO) recent wave of decisions designated precedential or informative, the USPTO added two more decisions to the list last week: Valve Corp. v. Elec. Scripting...more
Summary: The General Plastic factors used to determine whether the PTAB will exercise its discretion to deny a follow-on IPR petition can weigh against institution even if the follow-on petition is filed by a different party....more
Addressing an inter partes review (IPR) petition filed by respondents to an earlier-filed International Trade Commission (ITC) Section 337 investigation, the Patent Trial and Appeal Board (PTAB) declined to treat the petition...more
In a precedential decision Realtime (page 8-9) and a follow-on non-precedential decision Polygroup (page 15), two Federal Circuit panels (with Dyk on each) appear to hold that a single two-reference obviousness Ground, when...more
The PTAB has discretion to deny “follow-on” petitions that challenge the validity of a patent that has been previously subjected to inter partes review. See 35 U.S.C. § 314(a); Gen. Plastic Indus. Co. Ltd. v. Canon Kabushiki...more
In Shenzhen Silver Star Intelligent Tech. v. iRobot Corp., IPR2018-00761, Paper 15 (PTAB Sept. 5, 2018), the PTAB denied institution of Shenzhen Silver Star’s IPR petition in view of an earlier challenge to the same patent by...more
Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. In Shenzhen Silver Star Intelligent Tech. Co., Ltd. v....more
The Patent Trial and Appeal Board (PTAB) issued an August 2018 update to the American Invents Act Trial Practice Guide (the “Updated TPG”). The Updated TPG incorporates the PTAB’s current practices and provides further...more
The PTAB’s decision on whether or not to institute trial in a particular matter is discretionary. See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to...more
Sanofi-Aventis LLC and Regeneron Pharmaceuticals (“Petitioners”) filed three separate requests for an inter partes review (IPR) of Immunex Corporation’s (“Patent Owner”) patent related to asthma and allergy treatment—U.S....more
This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter. As we have noted in each of...more