News & Analysis as of

Prior Art Joinder

Erise IP

Eye on IPRs, March 2024: PTAB’s Claim Construction of Cooling Patent is Hot Issue, SCOTUS Won’t Hear IPR Joinder Challenge

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Cooling Patent Restored by Federal Circuit Over PTAB’s Claim Construction - ...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Network-1 Tech., Inc. v. Hewlett-Packard Co. et....

Network-1 sued HP, among others, for patent infringement. Another defendant then filed an inter partes review (IPR) petition. Following institution, HP filed its own petition on different grounds and a motion to join the...more

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

PTAB Strategies and Insights - December 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

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

PTAB Strategies and Insights - October 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Miller Canfield

IP Litigation Quarterly Update

Miller Canfield on

Introducing the IP Litigation Quarterly Update, a quarterly newsletter summarizing noteworthy and interesting opinions related to intellectual property law. In this first edition covering the first quarter of 2020, the...more

Goodwin

Issue Eighteen: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...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

Jones Day

Use Caution When Considering Multiple IPRs Against a Single Patent

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The recent PTAB order in IPR2017-01427 is a cautionary tale for petitioners considering multiple IPRs against a single patent. On May 11, 2017, Facebook and WhatsApp filed the ’1427 IPR petition challenging claims 1-8 of U.S....more

Akin Gump Strauss Hauer & Feld LLP

PTAB Relies on Priority Analysis in a Related Proceeding in Denying IPR

The Patent Trial and Appeal Board (PTAB) recently denied institution of an inter partes review (IPR), holding that the patent at issue had an effective filing date antedating the primary prior art reference. The...more

Goodwin

Issue Nine: PTAB Trial Tracker

Goodwin on

Motions to Amend: Burden to Prove Amended Claims are Unpatentable Rests with Petitioner - On October 4, 2017, the Federal Circuit issued its long-awaited en banc opinion in Aqua Products, Inc. v. Matal, regarding the...more

Knobbe Martens

PTAB Denies Apple's Motion to Withdraw IPR Petition and Motion for Joinder

Knobbe Martens on

The PTAB denied Apple’s motion to withdraw both its IPR petition and concurrent motion for joinder to prevent Apple from circumventing potential estoppel ramifications in Apple Inc. v. Papst Licensing GmbH & Co. KG,...more

Jones Day

Where Party Joined Pending IPRs, Delaware Takes Broad View of § 315 Estoppel

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In Parallel Networks Licensing, LLC v. International Business Machines Corporation, No. 1:13-cv-02072, Dkt. No. 366 (D. Del. Feb. 22, 2017) (Slip Op.), the court held IBM was estopped from asserting obviousness under §103...more

Patterson Belknap Webb & Tyler LLP

Four Years of IPRs: Lessons from Proceedings for the Cabilly II Patent

It has been four years since the first inter partes review proceedings were filed in the United States. The first IPR petition, filed on September 16, 2012 (the first day IPRs became available), made it all the way to the...more

McDermott Will & Emery

Use of § 325(d) Discretion Can Lead to Harsh Result - Samsung Austin Semiconductor, LLC v. Rembrandt Wireless Technologies, LP

The U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB or Board) used its § 325(d) to dismiss a petitioner’s motion for joinder with an inter partes review (IPR) instituted on an earlier filed petition by...more

McDermott Will & Emery

Successful Joinder in CBM Proceedings - Skimlinks, Inc. and Skimbit, Ltd. v. Linkgine, Inc.

Addressing the requirements for joinder of a covered business method (CBM) review to an ongoing CBM review, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB or Board) found that petitioner met...more

Robins Kaplan LLP

Is The Deck Stacked Against Patent Owners In The PTAB?

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Two years after the creation of the America Invents Act post-grant proceedings, many patent owners are facing an uphill battle when attempting to defend their intellectual property before the Patent Trial and Appeal Board...more

Akin Gump Strauss Hauer & Feld LLP

IP Newsflash - October 2014

Federal Circuit Affirms Inequitable Conduct Based On “Intentionally Selective” Disclosure - On September 26, 2014, a divided Federal Circuit panel affirmed the unenforceability of three American Calcar patents,...more

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