News & Analysis as of

Patent Validity Patent Trial and Appeal Board Final Written Decisions

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Qualcomm Inc. v. Intel Corp., 6 F.4th 1256 (Fed....

Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

Sunstein LLP

FanDuel Learns the Hard Way: An IPR Challenge to Any Patent Claim May be Lost if Not Comprehensive and Rigorous Enough

Sunstein LLP on

As we demonstrated in our own successful appeal, Arendi S.A.R.L. v. Apple Inc. (Fed. Cir. 2016), a petition for inter partes review (“IPR”) may fail when an expert declaration lacks detailed explanation. An expert’s...more

Mintz - Intellectual Property Viewpoints

Filling the Hole with Common Sense: When Evidentiary Support is Adequate

The Federal Circuit recently reaffirmed a case where common sense was used to supply a missing element in a § 103 obviousness analysis. On June 26, 2020, the Federal Circuit issued a decision in B/E Aerospace, Inc. v. C&D...more

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

Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions: Henny Penny Corp. v. Frymaster LLC, 938 F.3d 1324 (Fed....

Henny Penny petitioned for inter partes review (IPR) of Frymaster’s U.S. Patent 8,497,691. The ’691 patent relates to deep fryers and describes a system for measuring the state of cooking oil degradation with a “total polar...more

Knobbe Martens

No Appeal of PTAB’s Final Decision by Appealing a District Court’s Adoption of That Decision

Knobbe Martens on

PERSONAL AUDIO, LLC v. CBS CORPORATION - Before Moore, Reyna, and Taranto.  Appeal from the United States District Court for the Eastern District of Texas. Summary: The Federal Circuit has exclusive jurisdiction to hear...more

Knobbe Martens

PTAB’s New Informative Decisions Remind IPR Petitioners of Need for Well-Developed Rationale for Combining References

Knobbe Martens on

On December 11, 2019, the PTAB designated two additional decisions as “informative.”  Such informative decisions are not binding on subsequent panels, but are meant to provide guidance on recurring issues encountered by PTAB...more

Jones Day

IPR Goes Forward Despite Late Stage Parallel ITC Investigation

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Since their inception as part of the AIA, inter partes reviews (IPRs) have been a favorite tool in the arsenal of patent challengers. Their statutorily mandated 18-month schedule oftentimes allows the PTAB to resolve a...more

McDermott Will & Emery

Same Claim, Different Petitioner: Second IPR Permitted During Pendency of First

Addressing discretionary denial of institution of a new inter partes review (IPR) petition where the challenged claim is already the subject of an instituted IPR proceeding, the Patent Trial and Appeal Board (PTAB) decided...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: SAS Institute v. Iancu, 138 S.CT. 1348...

SAS sought an inter partes review (IPR) of ComplementSoft’s patent. In its petition, SAS alleged that all of the patent’s claims were unpatentable. The PTAB determined to institute trial on some, but not all, of the...more

Jones Day

E-Trading Patents Are “For Technological Inventions,” Not Subject To CBM Review

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In a nonprecedential per curiam decision, the Federal Circuit vacated the PTAB’s final written decisions in five covered business method (“CBM”) reviews on four related e-trading patents as “arbitrary and capricious” because...more

Jones Day

The PTAB Must Address All Grounds, Even After Final Written Decision

Jones Day on

Amazon.com, Inc. and Blizzard Entertainment, Inc. (“Amazon”) filed a petition for inter partes review challenging the validity of AC Technologies S.A.’s (“AC”) U.S. Patent No. 7,904,680. See IPR2015-01802. Amazon asserted...more

Knobbe Martens

Perhaps Assignor Estoppel Survives at the PTAB…via the District Court

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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

Knobbe Martens

Federal Circuit Review - August 2018

Knobbe Martens on

The Board’s Final Written Decision Must Address All Grounds for Unpatentability Raised in a Petition for Inter Partes Review - In Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180, 2018-1181, the Federal Circuit held that...more

Jones Day

Don’t Forget to Bring Your Redesigned Products to the ITC

Jones Day on

The ITC recently modified a previously issued remedial order such that certain of the Respondents’ redesigned products were not covered by the limited exclusion order (LEO) or the cease and desist order (CDO). Certain Network...more

Farella Braun + Martel LLP

Supreme Court Tells the Patent Office That IPR Proceedings Are “All-or-Nothing” Affairs

On April 24, 2018, the same day that the Supreme Court upheld the constitutionality of inter partes review (IPR) challenges to issued patents in one decision (Oil States Energy Services v. Green’s Energy Group), it also...more

Knobbe Martens

Supreme Court Issues Two Important Decisions Affecting Inter Partes Review Patent Challenges

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The Supreme Court has issued two important decisions affecting Inter Partes Review (“IPR”) and other post-grant patent challenges conducted by the Patent Trial and Appeal Board (“PTAB”)....more

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

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more

Jones Day

No Stay of Remedial Orders Even After PTAB Finds Claims Unpatentable

Jones Day on

The ITC has dealt a significant blow to the use of Inter Partes Review as a defense to a Section 337 investigation. In an order issued this week, the Commission denied a request to stay remedial orders that are currently on...more

Mintz - Intellectual Property Viewpoints

PTAB Invalidates Two Cisco Patents Found Valid and Infringed at the ITC

The Patent Trial and Appeal Board (“PTAB”) issued Final Written Decisions regarding Cisco’s U.S. Patent Nos. 6,377,577 (the “’577 Patent”) and 7,023,853 (the “’853 Patent”) on May 25, 2017 and U.S. Patent No. 7,224,668 (the...more

Kramer Levin Naftalis & Frankel LLP

Potential Impact of the Supreme Court’s Decision to Review the PTAB’s Practice of Issuing Partial Final Written Decisions in...

In a case with potential wide-ranging ramifications for patent validity challenges, on May 22, 2017, the Supreme Court granted a writ of certiorari in an appeal from an inter partes review (“IPR”) decision, SAS Institute v....more

Knobbe Martens

Supreme Court Will Decide Whether the PTAB Must Address All Claims Challenged in a Petition

Knobbe Martens on

The Supreme Court granted a petition for writ of certiorari to address whether the PTAB is required to issue a final written decision with respect to the patentability of every claim challenged by a petitioner in SAS...more

Knobbe Martens

PTAB: No Estoppel Because A Skilled Searcher Could Not Have Found Company Brochures

Knobbe Martens on

In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company...more

Knobbe Martens

PTAB Avoids Triggering Estoppel by Issuing Concurrent Final Written Decisions

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The Patent Trial and Appeal Board issued concurrent final written decisions upholding the validity of all challenged claims of U.S. Patent No. 8,141,154 in Palo Alto Networks, Inc. v. Finjan. Inc. IPR2015-01979, Paper 62...more

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