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Inter Partes Review (IPR) Proceeding Supreme Court of the United States Estoppel

Proskauer Rose LLP

Ventures in Venue: Selecting the Proper Patent Venue

Proskauer Rose LLP on

Amongst the many decisions an attorney makes throughout litigation, there is one choice that can shape the outcome of a case way before filing a motion, setting discovery and trial strategy, or even calling a witness: venue,...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

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

PTAB Strategies and Insights Newsletter - June 2021

[co-authors: Patrick Murray, Risa Rahman, and Jae Bandeh] 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...more

McDermott Will & Emery

No Second Bite at the Apple: Injury Must Be Imminent and Non-Speculative to Support Standing

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit ruled that a party did not have Article III appellate standing to obtain review of a final ruling of the Patent Trial & Appeal Board because the underlying district court...more

Goodwin

Issue Twenty-Six: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Troutman Pepper Locke

Standing To Appeal

Troutman Pepper Locke on

General Electric v. United Technologies Corp. General Electric petitioned for an IPR against a United Technologies patent relating to gas turbine engines. General Electric was unsuccessful against certain claims, and...more

Knobbe Martens

Discretionary Denial as a Case Management Tool: PTAB Requires Petitioner to Rank its Six IPR Petitions by Merit and then...

Knobbe Martens on

Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by...more

Jones Day

PTAB Designates Chevron and Deeper Informative

Jones Day on

On April 5, 2019, the PTAB designated as informative two decisions relating to 35 U.S.C. § 314(a): - Chevron Oronite Co. LLC v. Infineum USA L.P., Case IPR2018-00923, Paper 9 (Nov. 7, 2018) (designated: Apr. 5, 2019) [AIA...more

Jones Day

Seeing Multiple: Observations from Petitioner Filing Strategies Following SAS

Jones Day on

In April 2018, the United States Supreme Court held that the PTAB must issue a final written decision addressing every patent claim challenged in an IPR petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). In the...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: RPX Corp. v. Chanbond Llc, No. 17-2346,...

RPX petitioned for inter partes review of ChanBond’s ’822 patent. The Board instituted the IPR and determined that RPX did not show any challenged claim to be unpatentable. RPX appealed the final written decision to the...more

Bradley Arant Boult Cummings LLP

Review of All Claims in Petition for Inter Partes Review Required after SAS Institute

On the same day that the Supreme Court upheld the constitutionality of inter partes reviews, it ruled in SAS Institute Inc. v. Iancu that the United States Patent and Trademark Office wrongly implemented regulations allowing...more

BakerHostetler

[Webinar] Supreme Court Issues Decisions in Oil States and SAS Cases: A Discussion of the Impact on Patent Law and Inter Partes...

BakerHostetler on

This timely and fast-moving webinar provides insight for business leaders and legal counsel on the recently issued Supreme Court decisions in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute...more

Eversheds Sutherland (US) LLP

Stayin' alive: What’s next for IPRs after Oil States and SAS

On April 24, 2018, the US Supreme Court decided two important cases that directly impact inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB), and patent litigation as a whole. In Oil States Energy...more

Parker Poe Adams & Bernstein LLP

How the U.S. Supreme Court Ruled on Inter Partes Review and What It Means for Future Patent Challenges

The U.S. Supreme Court ruled Tuesday on two closely monitored cases impacting how patents could be challenged. In the more high-profile case, the court upheld the constitutionality of the inter partes review (IPR) process...more

Knobbe Martens

Supreme Court Issues Two Important Decisions Affecting Inter Partes Review Patent Challenges

Knobbe Martens on

The Supreme Court has issued two important decisions affecting Inter Partes Review (“IPR”) and other post-grant patent challenges conducted by the Patent Trial and Appeal Board (“PTAB”)....more

Knobbe Martens

Federal Circuit Review - June 2017

Knobbe Martens on

Inter Partes Reexamination Estoppel Attaches On Claim-by-Claim Basis for New Requests and Pending Proceedings - In In re Affinity Labs Of Texas, LLC, Appeal Nos. 2016-1092, 2016-1172, the Federal Circuit held that the...more

Goodwin

Issue Six: PTAB Trial Tracker

Goodwin on

Supreme Court Grants Certiorari to Decide Whether IPRs Are Constitutional - The Supreme Court has granted certiorari to answer the following question: Whether inter partes review – an adversarial process used by the...more

A&O Shearman

Intellectual Property Newsletter - June 2017

A&O Shearman on

Shearman & Sterling’s IP litigation team has published its quarterly newsletter. The newsletter covers a wide range of current IP topics: the Supreme Court’s TC Heartland patent-venue decision, the constitutionality of inter...more

Goodwin

Issue Five: PTAB Trial Tracker

Goodwin on

SUPREME COURT WILL REVIEW PTAB PRACTICE OF PARTIAL INSTITUTION - The Supreme Court has granted certiorari in SAS Institute Inc. v. Lee, No. 15-969 (Fed. Cir.), to examine the Board’s practice of instituting IPR on fewer...more

Foley & Lardner LLP

Supreme Court Grants Cert In SAS To Decide Required Scope Of PTAB Decision

Foley & Lardner LLP on

On May 22, 2017, the Supreme Court granted certiorari in SAS Institute, Inc. v. Lee, where it has been asked to decide whether the PTAB is statutorily required “to issue a final written decision as to every claim challenged...more

WilmerHale

Federal Circuit Patent Updates - March 2016

WilmerHale on

Clare v. Chrysler Group LLC (No. 2015-1999, 3/31/16) (Prost, Moore, Wallach) - Moore, J. Affirming summary judgment of non-infringement of patents related to storage compartment for pickup trucks. The Court rejected...more

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