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Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more
The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more
We are excited to share Sheppard Mullin’s inaugural quarterly report on key Federal Circuit decisions. The Spring 2023 Quarterly Report provides summaries of most key patent law-related decisions from January 1, 2023 to March...more
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
Speakers will offer updates, case summaries, and analysis of the significant 2022 PTAB guidance, actions, and rulings. Topics include: the Director’s 2022 Fintiv guidance, PTAB discretionary denial, the use of applicant...more
Intel filed three IPR petitions against Qualcomm’s ’949 patent, which is directed to “boot code” in a multi-processor system. Apple, who was not a party to any of the IPRs, uses Intel’s baseband processors in certain iPhone...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
In conjunction with the release of the firm's year-in-review report, speakers will offer case summaries and analysis of the significant 2022 appellate rulings discussed in the report. Topics of the featured intellectual...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
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...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
Network-1 sued HP, among others, for patent infringement. Another defendant then filed an inter partes review (IPR) petition. Following institution, HP filed its own petition on different grounds and a motion to join the...more
[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more
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
A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had...more
Campbell Soup petitioned for inter partes review (IPR) of Gamon’s design patents D612,646 and D621,645. The Patent Trial and Appeal Board (PTAB) instituted the IPR and determined that Campbell Soup did not establish...more
The Appointments Clause: Ensuring That PTAB Decisions Are Subject to Constitutional Checks and Balances In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 18-2251, the Federal Circuit ruled that, under the then-existing...more
A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more
This week, the Supreme Court left open the question of Article III standing with regards to appealing a final written decision from the Patent Trial and Appeals Board (“PTAB”) that is favorable to the patent owner. On...more
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
When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more
A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB. Assignor estoppel...more
PATENT CASE OF THE WEEK - WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2013-1527, 2014-1121, -1526, -1528 (Fed. Cir. Jan. 11, 2019) - In the continuing saga between WesternGeco and ION Geophysical, a Federal...more
PATENT CASE OF THE WEEK - VirnetX Inc. v. Apple, Inc., Appeal Nos. 2017-2490, -2494 (Fed. Cir. Dec. 10, 2018) The Federal Circuit affirmed two final written decisions of the Patent Trial and Appeal Board (“PTAB”), which...more