News & Analysis as of

Hewlett-Packard Inter Partes Review (IPR) Proceeding

Knobbe Martens

Federal Circuit Review - September 2020

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Joining an IPR Triggers IPR Estoppel Only for Instituted Grounds - In Network-1 Technologies, Inc. v. Hewlett-Packard Company, Hewlett Packard Enterprise Company , Appeal No. 18-2338, the Federal Circuit held that a party...more

Mintz - Intellectual Property Viewpoints

Joinder to the Rescue: Federal Circuit holds that joinder of instituted IPRs does not result in estoppel under § 315(e)

In Network-1 Techs., Inc. v. Hewlett-Packard, No. 18-2338, the Federal Circuit reversed and vacated multiple aspects of the district court’s final judgment holding that Hewlett-Packard (HP) did not infringe U.S. Patent No....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2020 #2

PATENT CASE OF THE WEEK - Apple Inc. v. Voip-Pal.com, Inc., Appeal No. 2018-1456, -1457 (Fed. Cir. Sept. 25, 2020) - In our Case of the Week, the Federal Circuit addressed two novel issues following inter partes review...more

Knobbe Martens

Federal Circuit Review - February 2019

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PTAB May Invalidate Claims on Reconsideration Based on Grounds Raised in the Institution Decision that Were Not Originally Instituted - In AC Technologies S.A., V. Amazon.Com, Inc., Blizzard Entertainment, Inc., Appeal No....more

McDermott Will & Emery

No Motivation to Combine Necessary Where Secondary Reference Only Explains Primary Reference

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding of obviousness over a patent owner’s challenge to the “combination” of prior art, explaining that no motivation to combine...more

Knobbe Martens

Federal Circuit Review | May 2016

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Federal Circuit Construes Claim Term in a Manner that Rendered Claim Language Superfluous - In SimpleAir, Inc. v. Sony Ericsson Mobile Commc’ns AB, Appeal No. 2015-1251, the Federal Circuit vacated the district court’s...more

McDermott Will & Emery

Late Request for Further Briefing to Supplement IPR Petition Not Allowed - Hewlett-Packard Co. v. U.S. Philips Corporation

McDermott Will & Emery on

Addressing the timing and availability of motions or presentation of substantive arguments in the context of an inter partes review (IPR), the Patent Trial and Appeal Board (PTAB or Board) dismissed the petitioner’s belated...more

Knobbe Martens

2015 IP Law Year In Review

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Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (May 26, 2015) - ..Does a defendant’s belief that a patent is invalid serve as a defense to charges of inducing infringement? NO - ..Inducement requires...more

Knobbe Martens

Federal Circuit Review | January 2016

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The Federal Circuit Will Review Appeals from Inter Partes Review Proceedings Under the “Substantial Evidence” Standard - In Merck & Cie v. Gnosis S.p.A., Appeal No. 2014-1779, the Federal Circuit affirmed a PTAB IPR...more

McDermott Will & Emery

Post-Grant PTAB Procedures Are Constitutional - MCM Portfolio LLC v. Hewlett-Packard Co.

McDermott Will & Emery on

In a case of first impression, the U.S. Court of Appeals for the Federal Circuit upheld the constitutionality of inter partes review (IPR) proceedings. The Federal Circuit ruled that because patents were a public right,...more

Foley & Lardner LLP

Federal Circuit Confirms Constitutionality of IPR Proceedings

Foley & Lardner LLP on

On December 3, 2015, in MCM Portfolio LLC v. Hewlett-Packard Co., a panel of the Federal Circuit unanimously upheld the constitutionality of IPR proceedings, finding that delegation of patent invalidity determinations to a...more

Mintz - Intellectual Property Viewpoints

Review of 2015 Federal Circuit Decisions Addressing IPR Claim Construction and Procedural Issues

2015 was a busy year for post-grant review appeals at the Federal Circuit and produced notable opinions in the areas of claim construction, IPR procedural issues, and the constitutionality of IPRs in general. In 2015, the...more

Manatt, Phelps & Phillips, LLP

Intellectual Property Law - December 2015

Down the Rabbit Hole: Trends in Software Patent Court Decisions Post-Alice - Why it matters: In Alice Corp. v. CLS Bank, the U.S. Supreme Court held that claims for a computer-based software method for reducing...more

Mintz

Federal Circuit Deems IPR Constitutional: The Patent Office Can Correct Its Own Mistakes

Mintz on

On December 9, 2015, the Federal Circuit ruled in MCM Portfolio LLC v. Hewlett-Packard Company that vesting the Patent Office with power to take back previously conferred patent rights through inter partes review does not...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Deems IPR Constitutional: The Patent Office Can Correct Its Own Mistakes

Yesterday the Federal Circuit ruled in MCM Portfolio LLC v. Hewlett-Packard Company (here) that vesting the Patent Office with power to take back previously-conferred patent rights through inter partes review does not violate...more

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