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(Podcast) The Briefing: 2025 IP Resolutions Start With a Review of IP Assets
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Wolf Greenfield Attorneys Review 2024 and Look Ahead to 2025
(Podcast) The Briefing: A Very Patented Christmas – The Quirkiest Inventions for the Holiday Season
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A Conversation with Phil Hamzik
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PODCAST: Williams Mullen's Trending Now: An IP Podcast - IP and M&A Transactions
4 Tips for Protecting Your AI Products
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Navigating Intellectual Property Challenges in the Renewable Energy Sector - Energy Law Insights
Using Innovative Technology to Advance Trial Strategies | Episode 70
Patent Considerations in View of the Nearshoring Trends to the Americas
The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co.,...more
The Consolidated Trial Practice Guide states that, “[t]o date, a substantial majority of patents have been challenged with a single petition.” Consolidated Trial Practice Guide (November 2019) at 59. However, “the Board...more
The Federal Circuit in Sisvel International S.A. v. Sierra Wireless, Inc. (Fed. Cir. Sept. 1, 2023) (Prost, Reyna, and Stark) affirmed a PTAB decision finding anticipated and/or obvious certain claims of two patents directed...more
Since the introduction of inter partes review proceedings in 2012, AIA trial practice has been constantly evolving and the USPTO has signaled that big changes may be ahead. Starting with the USPTO director’s 2022 memorandum...more
In a series of related inter partes review proceedings, the Patent Trial and Appeal Board recently granted a petitioner’s motion to strike the sworn affidavit of a witness who was unwilling to submit to cross-examination. In...more
In this final patent owner tip for surviving an instituted IPR we discuss sur-reply strategies. At this point, the Patent Owner has filed its Response, developed all the facts and evidence, and taken and defended expert...more
Precedential Federal Circuit Opinions - In Re MAXPOWER SEMICONDUCTOR, INC. [ORDER] (2021-146, 9/8/21) (O’Malley, Reyna, Chen) - Reyna, J. Denying mandamus petition and dismissing appeal. The Court declined to...more
Discovery procedures in inter partes review (“IPR”) proceedings, governed by 37 CFR § 42.51, are more limited in scope and timing compared to cases in district court. There are three types of discovery at the Patent Trial...more
Although the PTAB had previously stated that it would “rarely” be appropriate for a petitioner to file multiple petitions against the same patent, in Dolby Laboratories, Inc. v. Intertrust Technologies Corp., IPR 2020-01104;...more
Although first briefly mentioned as a possibility in the August 2018 Trial Practice Guide Update (page 10), outside of one instance (Bio-Rad Labs. v. 10X Genomics, IPR2019-00567; -00568, August 8, 2019), PTAB discretionary...more
The results of a recent update to the PTAB Multiple Petition Study show Petitioners face an uphill battle when attempting to utilize a multiple petition strategy. These results, discussed during the December 10, 2020...more
In the last two years, the Patent Trial and Appeal Board has issued two precedential decisions (in NHK and Fintiv) that set forth the board’s test for determining whether to deny an inter partes review (IPR) petition based on...more
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
The rate at which the Patent Trial and Appeal Board (“PTAB” or “Board”) institutes Petitions for Inter Partes Review (“IPR”) has been in steady decline since the introduction of the IPR procedure in 2013, and is expected to...more
The PTAB has been grappling with how to manage IPR petitions for patents that are also being challenged in federal district court, particularly when the district court is set to determine the patent validity prior to the...more
Holding its first mock oral arguments, the PTAB provided LEAP eligible participants with a unique opportunity to argue in front of PTAB judges. On August 7, 2020, mock oral PTAB hearings were held virtually with 40 LEAP...more
In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more
On July 13, the USPTO’s Patent Trial and Appeal Board (PTAB or Board) designated two decisions informative that apply the NHK factors for determining whether the PTAB will exercise its discretion to deny inter partes review...more
The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.” With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness...more
On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for material...more
The Patent Trial and Appeal Board (PTAB) recently designated an order, Apple Inc. v. Fintiv, Inc., IPR 2020-00019, Paper 11 (Mar. 20, 2020), as precedential. The order outlines six non-dispositive factors the PTAB will...more
The Patent Trial and Appeal Board (PTAB) implemented a number of measures designed to increase the consistency and predictability of panel decisions in the second half of 2018. These measures included the establishment of the...more
One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more
In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more
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