News & Analysis as of

Patents Prior Art Patent Owner Preliminary Response

Axinn, Veltrop & Harkrider LLP

Is It In or Is It Out?

Whether an argument raised in a Petitioner Reply falls within the scope of permissible arguments following a Patent Owner Response (POR) in IPR proceedings is a frequent source of dispute. As Axinn reported back in August,...more

Axinn, Veltrop & Harkrider LLP

Thought Leadership - Axinn IP Update: Federal Circuit Clarifies Permissible Scope of Petitioner Reply

The Federal Circuit issued two precedential decisions in August, reminding parties in Inter Partes Review (IPR) proceedings to refrain from sandbagging and raise all arguments at the first opportunity. In Axonics v....more

McDermott Will & Emery

Sliced and Diced: PTAB Decision Remanded for Further Analysis

McDermott Will & Emery on

In an appeal from a Patent Trial & Appeal Board final written decision, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision to include certain evidence first presented in the petitioner’s Reply but...more

Jones Day

Introducing Evidence Before Authorization May Result in Expungement

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Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement. A recent motion met such a fate in Ice Castles, LLC v....more

Womble Bond Dickinson

Proposed Novel PTAB Discretionary Denial Analysis in View of Parallel Petitions

Womble Bond Dickinson on

The authors have recently proposed alternative analyses for the discretionary denial of IPR and PGR petitions involved in parallel district court litigation, as well as for the discretionary denial of serial petitions filed...more

Mintz - Intellectual Property Viewpoints

Tip #6 for Avoiding IPR Institution: Advocate Claim Constructions the Petition Ignored

Arguing against material constructions proffered by an IPR petition is a basic building block of the patent owner’s preliminary response. Obviously, patent owners must investigate and advocate for claim constructions for...more

Mintz - Intellectual Property Viewpoints

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing...more

Mintz - Intellectual Property Viewpoints

Tip #2 for Avoiding IPR Institution: Focus on a few arguments that will affect all challenged claims

If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial. But that...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

Jones Day

Panel Including Director Iancu Institutes Unchallenged Petition for IPR

Jones Day on

On September 6, 2019, a PTAB panel including USPTO Director Andrei Iancu instituted inter partes review (“IPR”) of U.S. Patent No. 9,279,259 (“the ‘259 Patent”). The ‘259 Patent is directed to a tile lippage removal system...more

Jones Day

Strategic Decision to Forgo Expert Does Not Allow a “Second Bite”

Jones Day on

The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive”...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Finds Good Cause for Staying Ex Parte Reexamination in Light of Parallel IPR

A panel at the Patent Trial and Appeal Board (PTAB) recently considered whether to stay an ex parte reexamination proceeding where the patent was also the subject of a parallel inter partes review (IPR). On September 11...more

Jones Day

Timing Is Key in PTAB’s Decision to Review Follow-On Petition by Different Party

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Relying on 35 U.S.C. § 314(a), the Patent Trial and Appeal Board has articulated its reluctance to review “follow-on” petitions challenging the validity of patents that have been previously subjected to inter partes review....more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2018

PATENT CASE OF THE WEEK - Ericsson Inc. v. Intellectual Ventures I LLC, Appeal No. 2017-1521 (Fed. Cir. Aug. 27, 2018) - In an appeal from an inter partes review, the Court reviewed the Patent Trial and Appeal Board’s...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

Mintz - Intellectual Property Viewpoints

General Plastic Industrial Co. v. Canon Kabushiki Kaisha: PTAB Explains Factors Considers for Follow-On Petitions

On September 6, 2017, an expanded panel of the Patent Trial and Appeal Board issued an “informative” decision in General Plastic Industrial Co., Ltd, v. Canon Kabushiki Kaisha setting forth the Board’s framework for analyzing...more

McDermott Will & Emery

Decision to Institute IPR Need Not Be Binary - Synopsys, Inc. v. Mentor Graphics Corp.

McDermott Will & Emery on

Addressing whether the Patent Trial and Appeal Board (PTAB or Board) may institute inter partes review (IPR) with respect to some but not all of the claims challenged in a petition, the US Court of Appeals for the Federal...more

McDermott Will & Emery

PTAB Clarifies Requirements for Claim Amendments - MasterImage 3D, Inc. and MasterImage 3D Asia, LLC v. RealD Inc.

In an order perhaps indicating that the tide is turning for patent owners seeking to amend claims in inter partes review (IPR), an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) provided clarification as...more

Foley & Lardner LLP

Kyle Bass Loses Round 1 of IPR Attack Against Pharma/Biotech Patents

Foley & Lardner LLP on

On August 24, 2015, the Patent Trial and Appeal Board (PTAB) declined institution of two petitions filed by Coalition For Affordable Drugs for Inter Partes Reviews (IPRs) of Acorda’s patents (U.S. Patent Nos: 8,007,826,...more

Foley & Lardner LLP

PTAB Denies Institution of Kyle Bass's Ampyra Patent Challenge

Foley & Lardner LLP on

The USPTO Patent Trial and Appeal Board (PTAB) has put an end to Kyle Bass’s Ampyra patent challenge, by denying institution of Inter Partes Review (IPR) proceedings. While many were hoping the PTAB would render a decision...more

McDonnell Boehnen Hulbert & Berghoff LLP

PTAB Denies Inter Partes Review Petitions Against Two Acorda Patents

One of the statistics gleaned from Director Michelle Lee's recent blog on the post-issuance review provisions of the America Invents Act is that only 42% of inter partes review petitions have been granted over the past three...more

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