On March 24, 2022, the Court of Appeals for the Federal Circuit criticized the Precedential Opinion Panel's application of its standard for when it is (and isn't) appropriate for the Patent Trial and Appeal Board to sua...more
In 2018, Hunting Titan, Inc. filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,581,422 (“the ’422 patent”), which is owned by DynaEnergetics Europe GmbH, a manufacturer of industrial explosives. In...more
Claim Limitation Not Disclosed by Any Reference but Disclosed by “Proposed Combination” of References Is Obvious - In Hoyt Augustus Fleming v. Cirrus Design Corporation, Appeal No. 21-1561, the Federal Circuit held that a...more
The US Court of Appeals for the Federal Circuit addressed, for the first time, the issue of when the Patent Trial & Appeal Board (Board) may raise a ground of unpatentability that was not advanced by a petitioner in relation...more
Reinforcing the impact of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the US Court of Appeals for the Federal Circuit reiterated that the Patent Trial and Appeal Board’s threshold...more
Reversing the Patent Trial and Appeal Board, the US Court of Appeals for the Federal Circuit concluded that because a plaintiff was a successor in bankruptcy, it was a successor in an inter partes re-examination. The Court...more
It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more
On December 3, 2020, the Patent Trial and Appeal Board (“PTAB”) released data regarding the usage and success rates of its Motion to Amend (“MTA”) Pilot Program (“Pilot”). All PTAB cases instituted on or after March 15, 2019,...more
In Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc. (July 22, 2020), the Federal Circuit held that the Patent Trial and Appeal Board (“the PTAB”) may consider, in its review of substitute claims proposed in an inter partes review...more
The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board...more
On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more
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
Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal...more
The Federal Circuit recently held that substitute claims proposed by a patent owner in an IPR are not limited to patentability challenges under 35 U.S.C. §§102 and 103, and can be challenged under 35 U.S.C. §101. ...more
Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims. The appeal raises issues of finality...more
WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more
Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, IPR2018-00600 (July 6, 2020) - Designated Precedential on July 6, 2020 - Petitioner Hunting Titan challenged Patent Owner Dynaenergetics’ claims based upon anticipation...more
In Apple v. Uniloc 2017 LLC, the patent owner moved to amend the claims contingent on an unpatentability finding by the Board. The contingent amendment cancelled the original claims and replaced them with a new claim set. The...more
In a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring systems patentable, and allowed substitution of amended claims for others deemed unpatentable. See Syrinix Inc. v. Blacoh Fluid...more
On March 7, 2019, the Patent Trial and Appeal Board (PTAB) designated the decision in Lectrosonics, Inc. v. Zaxcom as precedential. The order provides guidance and information on practice surrounding a patent owner’s motion...more
The first real post-Aqua guidance issued from the Board on June 1, 2018 for motions to amend. Western Digital Corp. v. SPEX Technologies, Inc., IPR2018-00082 and IPR2018-00084 (Paper 13). According to the Western Digital...more
On March 20, 2018, the PTAB issued a Final Written Decision in Kapsch TrafficCom IVHS Inc. v. Neology, Inc., Case IPR2016-01763, Paper 60 (PTAB Mar. 20, 2018), finding that Petitioner Kapsch TrafficCom IVHS Inc. (“Kapsch”)...more
On November 21st, the PTAB issued guidance on motions to amend based on the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017). In view of the Aqua Products decision, the PTAB...more
The PTAB granted-in-part a patent owner’s motion to substitute claims based on evidence of secondary considerations of nonobviousness in Valeo North America, Inc. v. Schaeffler Technologies, AG & CO. KG, IPR2016-00502, Paper...more