News & Analysis as of

Patent Ownership Inter Partes Review (IPR) Proceeding Intellectual Property Protection

Fish & Richardson

EPRx 101: Getting to Know Ex Parte Reexamination

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Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more

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

PTAB Year in Review – PTAB Trends in 2024: Challenges to Genus Claims

In the biotechnology and chemical spaces, genus claims are often sought by patent applicants to protect not only a specific product of interest, but also as a means to protect against others making related products that...more

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

Reexamination of Expired Patents

Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more

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

2024 PTAB Year in Review: Analysis & Trends – 2024 PTAB Case Highlights

Abuse of Process and/or Sanctions – 37 C.F.R. § 42.12 - Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC, IPR2021-00847, IPR2021-00850, IPR2021-00854, IPR2021-00857 & IPR2021-00860 - Decision...more

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

2024 PTAB Year in Review: Analysis & Trends

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

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

2024 Design Patents Year in Review: Analysis & Trends - Design Patents at the PTAB: 2024 in Review

Inter partes activity involving design patents at the Patent Trial and Appeal Board (PTAB) was relatively low in 2024. The PTAB rendered just two inter partes decisions involving design patents: Next Step Group, Inc. v....more

McDermott Will & Emery

A Lesson in Judicial Principles: No Dismissal After Decision

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The US Court of Appeals for the Federal Circuit denied a patent owner’s motion to voluntarily dismiss the appeal following the Federal Circuit’s decision to vacate and remand the case to the Patent Trial & Appeal Board but...more

Erise IP

Eye on IPRs, October 2024: USPTO Issues Final PTAB Procedure Rules

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: USPTO Issues Final Rules on PTAB Procedure - The U.S. Patent and...more

Jones Day

Director Vacates Decision Based on Improper Claim Construction

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The PTAB denied institution of inter partes review reasoning that Petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. The...more

Jones Day

Secondary Considerations Arguments Precluded By Prior Nexus Testimony

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On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable. Yita LLC v. MacNeil IP LLC, IPR2023-00172, Paper 70 (PTAB Jun. 6, 2024)...more

Jones Day

Director Says Typo Was Read Incorrectly

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On July 30, 2024, Director Vidal ordered patent board judges to revisit a ruling on “an obvious typographical error.” See Hesai Technology Co. Ltd., Hesai Group, and Hesai Inc. v. Ouster, Inc., IPR2023-01485. Director Vidal,...more

Jones Day

Federal Circuit Clarifies Scope of Patent Owner Estoppel

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The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more

Jones Day

Director Provides Reminders For Obviousness Analysis

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On July 9, 2024, Director Vidal reversed and remanded a denial of institution of inter partes review (IPR) relating to three Spin Master patents. See Prime Time Toys LLC v. Spin Master, Inc., IPR Nos. 2023-01339, 2023-01348,...more

Jones Day

Road Mapping Leads to Dead End

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On April 25, 2024, the PTAB denied Masimo Corporation’s (“Petitioner’s”) second petition for inter partes review (“IPR”) against U.S. Patent No. 10,076,257 (the “’257 patent”). Masimo Corp. v. Apple Inc., IPR2024-00071,...more

Jones Day

Shifting Burden Dooms Patent Owner

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In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology, Inc. v. Viavi...more

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

Sterne Kessler’s Reissue, Reexamination, and Supplemental Examination Practice Tips – May 2024

In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more

Jones Day

Institution Denied For Lack of Sufficient Structure

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The Board declined to institute inter partes review because Petitioner failed to identify adequate corresponding structure in the challenged patent that performed the function of claim limitation that was to be construed...more

Jones Day

Institution Denial Vacated to Reconsider Prior Art Drawing

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On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more

Jones Day

USPTO Issues Notice of Proposed Rulemaking On Discretionary Denial, Serial and Parallel Petitions, and Settlement

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On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues. The Notice addresses stakeholder feedback responsive to the...more

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

IP Hot Topic: USPTO Publishes Long-awaited Notice of Proposed Rulemaking with Updates to PTAB Practice and Procedure

On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more

Jones Day

PTAB Terminates Institution in Netflix v. ???

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The Patent Trial and Appeal Board (PTAB) recently dismissed and terminated inter partes review challenging claims of U.S. Patent No. 8,495,167 (“the ’167 patent”). Netflix, Inc. v. Owner, IPR2022-01568, Paper 29 (PTAB March...more

Jones Day

Claim Construction Dispositive In Patentability Determination

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It goes without saying that claim construction is an important issue, but the PTAB’s recent decision in Netflix, Inc. v. DIVX, LLC, IPR2020-00558, Paper 66 (PTAB Feb. 22, 2024), shows not only that reasonable minds can differ...more

Alston & Bird

Patent Case Summaries | Week Ending March 8, 2024

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Chewy, Inc. v. International Business Machines Corp., No. 2022-1756 (Fed. Cir. (S.D.N.Y.) Mar. 5, 2024). Opinion by Moore, joined by Stoll and Cunningham. IBM owns two patents that generally relate to improvements in...more

Jones Day

PTAB Denies Parallel IPR Petition

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The PTAB recently denied Intel’s (Petitioner) parallel IPR petition (IPR2023-01140) against AX Wireless (Patent Owner) challenging certain claims of U.S. Pat. No. 10,917,272. The denial came after Intel filed a separate...more

Jones Day

PTAB Issues Sanctions for Attempted Extortion During “Settlement Negotiations”

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Director Vidal recently issued sanctions against OpenSky Industries (“OpenSky”) for attempted extortion during settlement negotiations and abuse of the IPR process for US Patent 7,725,759 and awarded $413,264.15 to VLSI...more

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