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Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast
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Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more
Returning to Washington in May, ACI’s 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement is your opportunity to learn from and network with key members of the ITC Bench, senior ITC Attorneys and leading...more
Join litigation shareholder Libbie DiMarco as she breaks down the latest developments for mitigating ITC remedial orders with effective litigation strategies ranging from product redesigns (and when to introduce them) to PTAB...more
This appeal marked the fourth Federal Circuit decision in a series of cases arising from BriarTek IP Inc.’s patents on two-way global satellite communication devices. BriarTek sought to enforce it patents against multiple...more
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
The Patent Trial and Appeal Board's 2020 Apple Inc. v. Fintiv Inc. decision established six factors that guide its discretionary denial of an inter partes review or post-grant review petition in view of a parallel court case....more
The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more
The USPTO has issued interim procedures curbing the PTAB’s discretionary denials over post-grant proceedings associated with parallel ITC proceedings or district court litigation. ...more
On June 22, 2022, the U.S. Patent and Trademark Office issued two documents regarding the Patent Trial and Appeals Board's discretionary denials of post-grant challenges based on parallel litigation: a retrospective study of...more
In DBN Holding, Inc. v. ITC, the Court of Appeals for the Federal Circuit (“CAFC”) upheld a $6.2M civil penalty levied against DBN, an ITC respondent, for violating a remedial consent order, even though the patent upon which...more
In 2021, Fintiv continued to be one of the hottest and most controversial issues facing the patent bar. The USPTO Patent Trial and Appeal Board’s (PTAB) precedential Fintiv decision enumerated factors that the PTAB applies...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
[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
Petitioners and Patent Owners alike have started filing stipulations in district court and at the International Trade Commission to leverage the Fintiv factors in their favor on the issue of discretionary denial at the Patent...more
[co-author: Jay Bober, Summer Associate] 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...more
We have seen that decisions to institute an inter partes review (IPR) when the challenged patent is part of a parallel proceeding have become rare recently in light of the Fintiv factors. Apple Inc. v. Fintiv, Inc.,...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
Bid for Vaping IPR Denial Up in Smoke - Following a previously unsuccessful IPR bid, in a second go-around, Philip Morris won an institution decision in an inter partes review of a vaping patent owned by rival R.J....more
[co-author: Joseph Diorio, Law Clerk] The April 2021 issue of Sterne Kessler's MarkIt to Market® newsletter discusses the suit filed by Nike over MSCHF's "Satan Shoes"; the latest PTAB decision in the ongoing battle...more
Recently, the USPTO's Patent Trial and Appeal Board ("PTAB") has issued significantly more procedural denials of IPRs, including those based on the NHK Spring and Fintiv decisions. In response, petitioners have tried a...more
In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation), where the Board instituted trial, i.e., did not exercise its...more
The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct....more
The authors propose replacing the PTAB’s current NHK-Fintiv factors with the alternative “Babcock-Train Factors” set forth herein These alternative factors have been crafted in an effort to provide clearer institution...more
By creating the new precedential Fintiv factors, the PTAB provides guidance on what it will consider when deciding whether to deny institution of an IPR petition challenging patent claims that are also being litigated in a...more