News & Analysis as of

Motion to Terminate Patent Litigation

Jones Day

How Long Is Too Long To Wait To Settle?

Jones Day on

An IPR “shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” ...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Polaris Innovations Ltd. v. Brent, 48 F.4th 1365...

NVIDIA petitioned for IPR of two patents owned by Polaris. The Board found the challenged claims unpatentable. Polaris appealed. While on appeal, the final written decisions in those IPRs were vacated and the proceedings were...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Intuitive Surgical, Inc. v. Ethicon LLC, 25 F.4th...

Intuitive filed three IPR petitions, all on the same day, challenging Ethicon’s endoscopic surgical instrument patent. The petitions challenged overlapping claims based on different combinations of prior art references. The...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

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

IPR Limbo During the Arthrex Decisions

In Polaris Innovations Ltd. v. Brent, No. 2019-1483, 2022 WL 4241665 (Fed. Cir. Sept. 15, 2022), the Federal Circuit faced an appeal that had bounced back and forth between the Court and Patent Trial and Appeal Board (“the...more

Goodwin

Issue 35: PTAB Trial Tracker

Goodwin on

TIMING OF REQUEST KEY FOR BOARD DECISIONS ON MOTIONS TO TERMINATE - In Ocado Group PLC v. AutoStore Technology AS, PGR2021-00038 (July 30, 2021), Petitioner moved to withdraw its petition, arguing that efficiency favored...more

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

PTAB Strategies and Insights - August 2019: Reexaminations are Terminated Because Invalidity Issues Were Finally Resolved in Court...

The Federal Circuit recently decided a reexamination case, VirnetX v. Apple and Cisco, that addressed two issues: (1) was requester estopped from maintaining its reexams under the pre-AIA version of 35 U.S.C. § 317(b) (2006)...more

McDermott Will & Emery

Stay on Target: Despite District Court's Indefiniteness Ruling, PTAB Maintains IPR Proceeding

Addressing the interplay between a district court’s indefiniteness determination and a pending inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB) denied a patent owner’s motion to terminate the...more

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

PTAB Strategies and Insights - May 2019: Court's Infringement Indefiniteness Does Not Dictate Validity Indefiniteness at PTAB

In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more

Patterson Belknap Webb & Tyler LLP

Four Years of IPRs: Lessons from Proceedings for the Cabilly II Patent

It has been four years since the first inter partes review proceedings were filed in the United States. The first IPR petition, filed on September 16, 2012 (the first day IPRs became available), made it all the way to the...more

WilmerHale

Settling IPRs and District Court Litigation: Strategic Considerations for Resolving a Dispute

WilmerHale on

Inter partes review proceedings have become a popular mechanism for defendants to challenge the validity of a patent that is asserted in a district court litigation. Because IPRs typically move more quickly than district...more

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