News & Analysis as of

Patents Evidentiary Standards Inter Partes Review (IPR) Proceeding

Pillsbury Winthrop Shaw Pittman LLP

Navigating the PREVAIL Act: Key Impacts on Litigants as It Advances in the Senate

The PREVAIL Act is now subject to debate before the full Senate. The Act will require petitioners to certify standing, two new categories of which were recently added via a manager’s amendment....more

Jones Day

PTAB Reiterates Strict Evidentiary Standard for Printed Publications

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The PTAB denied institution of inter partes review (IPR) for a patent directed to geothermal technology. Fervo Energy Co. v. Ormat Techs. Inc., IPR2014-00665, Paper 18 (PTAB Sept. 18, 2024). The claimed invention related to...more

Jones Day

Undated Screenshot Insufficient to Prove Public Accessibility of GitHub Repository

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In AO Kaspersky Lab v. Open Text Inc., the PTAB denied inter partes review after determining that a screenshot of a GitHub repository was insufficient to establish that a whitepaper posted to that repository qualified as a...more

Jones Day

Expectation of Success Analysis Need Not Be Separate

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In Elekta Limited v. Zap Surgical Systems, Inc., the Federal Circuit recently affirmed a PTAB decision finding certain claims of a patent owned by Elekta Limited (“Elekta”) to be unpatentable, even though the PTAB decision...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Warns Against Patent Owner Sandbagging in IPR Claim Construction

On August 7, in Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) was required to consider an inter partes review (IPR) petitioner’s arguments that were raised for the...more

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

2019 PTAB Year in Review: Analysis & Trends

Powerful. Resilient. Ever-evolving. These characteristics of the Patent Trial and Appeal Board (PTAB) were on full display in 2019. This past year the PTAB received more than 1,300 inter partes review (IPR), post grant review...more

Knobbe Martens

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

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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

Foley & Lardner LLP

Challenging IPR Institutions Following Federal Court Decision in In re: Power Integrations Inc.

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Practitioners should be aware that challenging the PTAB’s decision to deny institution of an IPR got even harder after a recent Federal Circuit decision. While the Supreme Court has already made clear that challenges to...more

Jones Day

Practical Tips from the Judges’ Panel at the PTAB Judicial Conference

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On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more

Snell & Wilmer

Federal Circuit Holds GoPro’s Catalog Qualifies as a Printed Publication

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Earlier today, the Federal Circuit released a decision concerning what constitutes a printed publication in GoPro Inc. v. Contour IP Holding LLC. The court reversed the Patent Trial and Appeal Board (“PTAB”) and held that...more

Jones Day

No Showing that Conference Poster Constituted a Printed Publication

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With the universe of prior art available for IPRs being limited to patents and printed publications (35 U.S.C. § 311(b)), questions regarding the applicability of printed material that might be considered less mainstream...more

Jones Day

When is a Conference Paper Publicly Accessible: Lessons Learned

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In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, the PTAB provided new guidance to practitioners regarding the eligibility of conference papers as printed publications for use as prior art references...more

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