News & Analysis as of

Microsoft Patents Prior Art

Jones Day

Fed. Cir.: Don’t Expect PTAB to Do Your Work For You

Jones Day on

The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Avoidable Errors at the PTAB: When an “Index” is Not an “Index”

Last week, Microsoft got tripped up at oral argument on the blocking and tackling of IPR practice:  making sure your prior art is prior art....more

McDermott Will & Emery

To Be Anticipatory, Reference Must Disclose All Claim Elements Arranged as in Claim

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a decision that a patent challenger at the Patent Trial and Appeal Board (PTAB) must prove invalidity by a preponderance of evidence and must establish anticipation...more

Knobbe Martens

Magistrate Judge Recommends IPR Estoppel Bar of Prior Art References

Knobbe Martens on

A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that...more

Akin Gump Strauss Hauer & Feld LLP

District Court Precludes Defendant from Asserting Invalidity Grounds That It Raised or Could Have Reasonably Raised in IPR...

On May 11, 2017, Magistrate Judge Roy Payne in the Eastern District of Texas recommended that patentee Biscotti’s inter partes review (IPR) estoppel motion be granted–in-part and denied-in-part....more

McDermott Will & Emery

Copyright Date Alone Does Not Prove Public Accessibility of Software User Guide

Addressing the standard for establishing whether a prior art reference qualifies as a “printed publication,” the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR), finding that the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Microsoft Corporation v. Proxyconn, Inc. (Fed. Cir. 2015)

Earlier this week, we noted that parties wishing to challenge IPR Final Written Decisions from the PTAB on appeal to the Federal Circuit would face an uphill challenge. However, even if that challenge is extremely difficult,...more

McDermott Will & Emery

Patent Trial and Appeal Board Claim Construction Cannot Be Unreasonable - Microsoft Corp., v. Proxyconn, Inc.

Although the U.S. Court of Appeals for the Federal Circuit has held that the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB or Board) has the authority to use the broadest reasonable interpretation claim...more

Ladas & Parry LLP

The Federal Circuit Reviews Patent Trial and Appeal Board Decisions on Inter Partes Review

Ladas & Parry LLP on

There are now three decisions of the Federal Circuit on appeals from the Patent Trial and Appeal Board (PTAB) on inter partes reviews: - In re Cuozzo Speed Technologies LLC - Belden Inc. v. Berk-Tek LLC and -...more

McDermott Will & Emery

Independent Corroboration Required To Prove Conception

McDermott Will & Emery on

Microsoft Corp. v. SurfCast, Inc. - Addressing the requirements for antedating prior art, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB) ruled all claims of a challenged patent unpatentable,...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - October 2014

Federal Circuit Affirms Inequitable Conduct Based On “Intentionally Selective” Disclosure - On September 26, 2014, a divided Federal Circuit panel affirmed the unenforceability of three American Calcar patents,...more

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