News & Analysis as of

Prior Art Follow-On Patent Petitions

Womble Bond Dickinson

Proposed Alternative PTAB Discretionary Denial Analysis in View of Serial Petitions

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In 2012, Congress enacted the American Invents Act (“AIA”) for the purpose of “establish[ing] a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive...more

Jones Day

Lights Out For Solar Cell Follow-On Petition

Jones Day on

The PTAB denied institution of a follow on petition filed five months after an initial petition by the same petitioner, even though the two petitions were directed to different claims. The Board found no persuasive...more

McDermott Will & Emery

PTAB Designates Two Opinions Precedential and One Opinion Informative, Further Clarifying the Scope of the Board’s Discretion...

Addressing the scope of the Patent Trial and Appeal Board’s (“Board”) discretion under 35 U.S.C. § 325(d) to deny institution, the Board designated three opinions as precedential or informative. Precedential Opinions: In...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

Bass, Berry & Sims PLC

USPTO Issues Two Precedential Decisions Relating to the PTAB’s Discretion to Deny Institution

Bass, Berry & Sims PLC on

Following the United States Patent and Trademark Office’s (USPTO) recent wave of decisions designated precedential or informative, the USPTO added two more decisions to the list last week: Valve Corp. v. Elec. Scripting...more

Jones Day

PTAB Denies Institution Of Follow-On Petition From Similarly Situated Defendant

Jones Day on

In Shenzhen Silver Star Intelligent Tech. v. iRobot Corp., IPR2018-00761, Paper 15 (PTAB Sept. 5, 2018), the PTAB denied institution of Shenzhen Silver Star’s IPR petition in view of an earlier challenge to the same patent by...more

Mintz - Intellectual Property Viewpoints

PTAB Denies Institution of IPR after Successive Petitions by Unrelated Co-Defendants

Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. In Shenzhen Silver Star Intelligent Tech. Co., Ltd. v....more

Jones Day

§ 325(d) for § 101 CBM Petition

Jones Day on

The PTAB’s decision on whether or not to institute trial in a particular matter is discretionary. See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Institutes Trial on a “Follow-On” IPR Petition Following Two Previous Denials

Sanofi-Aventis LLC and Regeneron Pharmaceuticals (“Petitioners”) filed three separate requests for an inter partes review (IPR) of Immunex Corporation’s (“Patent Owner”) patent related to asthma and allergy treatment—U.S....more

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

The Board Gives Section 325(d) Sharp Teeth—Part III —Things Are Looking Up for Patent Owners

This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter. As we have noted in each of...more

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

The Board Gives Section 325(d) Sharp Teeth—Part II – The Petitioner's Criticality to Selecting and Using The Right Prior Art

This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more

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

Perspectives on the PTAB Newsletter - November 2017

The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more

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

The Board Gives Section 325(d) Sharp Teeth

This is the first of a three-part series discussing developments around Section 325(d). Part two will appear in our November 2017 newsletter and part three will appear in our December 2017 newsletter. Congress granted the...more

Jones Day

PTAB Makes Precedential Its Multi-Factor Approach To Assessing Follow-On Petitions

Jones Day on

Serial IPR or CBM petitions challenging the same patent claims have been a recurring issue for the PTAB. On October 18, 2017, the PTAB designated as precedential a portion of a decision by an expanded panel that addressed...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

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