News & Analysis as of

Patent Invalidity Inter Partes Review (IPR) Proceeding Evidence

Jones Day

Federal Circuit Reverses District Court’s Application Of Collateral Estoppel

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Kroy IP Holdings, LLC sued Groupon, Inc., alleging infringement of 13 claims of U.S. Patent No. 6,061,660 (“’660 patent’), which relates to incentive programs over computer networks. Those claims were invalidated via...more

Sunstein LLP

Collateral (Patent) Damage Undone by Federal Circuit?

Sunstein LLP on

In Kroy IP Holdings v. Groupon, The Federal Circuit issued a decision that should come as a comfort to patent owners, addressing the interplay between decisions of the Patent Trial and Appeal Board (“PTAB”) in inter partes...more

Jones Day

Petitioner’s Proof of Printed Publication Falls Short

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On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether...more

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

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

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

Jones Day

Speculative IPR Discovery Request Not in the Interest of Justice

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“Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int’l, Inc. v....more

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

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...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

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

2021 PTAB Year in Review: Analysis & Trends

[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

Jones Day

PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence

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It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions.  The PTAB has discretionarily denied IPR petitions, for example, due...more

Jones Day

PTAB Permits Incorporation by Reference in Expert Declaration

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The first step in requesting an inter partes review (IPR) of a granted patent is the filing of a petition before the Patent Trial and Appeal Board (PTAB), in which the petitioner states the grounds for the invalidity of the...more

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

PTAB Strategies and Insights - September 2021

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

Goodwin

Issue 34: 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

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

PTAB Strategies and Insights - July 2021: What Court Stipulations Persuade the PTAB in Petitioners’ and Patent Owners’ Favor on...

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

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

PTAB Strategies and Insights - July 2021

[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

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

PTAB Strategies and Insights - March 2021

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

Akin Gump Strauss Hauer & Feld LLP

Far-Reaching Effect of IPR Estoppel Dooms Invalidity Defense Based on Prior Art Product

Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more

McDermott Will & Emery

Unrebutted Declaration Supports Public Availability of Prior Art

McDermott Will & Emery on

Addressing the evidentiary showing necessary to prove whether a foreign publication is publicly available, the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) did not abuse its...more

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

PTAB Strategies and Insights - November 2019: The Board's Reliance on Expert's Conclusory Statements May Not Meet Substantial...

In a recent precedential decision, TQ Delta, LLC v. Cisco Systems, Inc., the Federal Circuit reversed a pair of USPTO inter partes review proceedings that invalidated all claims of two related U.S. patents because “the...more

Bradley Arant Boult Cummings LLP

Federal Circuit Affirms PTAB’s Admission of Late Evidence on Public Accessibility of Prior Art - Intellectual Property News

On Thursday of last week in Telefonaktiebolaget LM Ericsson v. TCL Corporation, the Federal Circuit affirmed two Patent Trial and Appeal Board (PTAB) decisions (IPR2015-01584 and IPR2015-01600) finding that a single claim in...more

Akin Gump Strauss Hauer & Feld LLP

Invalidity Defenses Will Not Be Stricken at Pleading Stage Despite Defendant’s Earlier PGR Petition

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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2019 #4

Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-1584 (Fed. Cir. Aug. 21, 2019) - In this week’s Case of the Week, the Federal Circuit affirmed an inter partes review decision of the Patent Trial and Appeal Board,...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2019 #2

PATENT CASE OF THE WEEK - Omega Patents, LLC v. CalAmp Corp., Appeal No. 2018-1309 (Fed. Cir. Apr. 8, 2019)- In an appeal from a series of post-trial decisions, the Federal Circuit provided several important opinions. The...more

Knobbe Martens

Praxair Distribution, Inc. V. Mallinckrodt Hospital Products

Knobbe Martens on

Federal Circuit Summaries - Before Prost, Newman, and Lourie. Appeal from the United States Patent and Trademark Office (PTAB) Summary: A limitation that merely claims information by incorporating that information into...more

Knobbe Martens

Federal Circuit Review - April 2018

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Broadest Reasonable Interpretation Encompasses All Embodiments in the Absence of Support Specifically Excluding an Embodiment - In Steuben Foods, Inc. v. Nestle USA, Inc., Appeal No. 2017-1290, the Federal Circuit...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - In re Power Integrations, Inc., Appeal No. 17-1304 (Fed. Cir. 2018) - In In re: Power Integrations, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) rejection of a...more

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