The US Court of Appeals for the Federal Circuit denied a patent owner’s motion to voluntarily dismiss the appeal following the Federal Circuit’s decision to vacate and remand the case to the Patent Trial & Appeal Board but...more
On May 5, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and removed the precedential designation on another. The newly-designated precedential opinion lays out factors that the PTAB...more
Last week, the Federal Circuit, in a precedential decision, reinforced that an accused infringer can be a “prevailing party” for the purposes of seeking attorneys’ fees under 35 U.S.C. § 285 when it successfully invalidates...more
O.F. MOSSBERG & SONS, INC. v. TIMNEY TRIGGERS, LLC - Before Lourie, Reyna, and Hughes. Appeal from the United States District Court for the District of Connecticut. Summary: A stay, followed by a voluntary dismissal,...more
On August 29, 2019, the Patent Trial and Appeal Board (PTAB) designated as precedential its January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc. In Cisco, the PTAB held that 35 U.S.C. § 315(a)(1) bars...more
A magistrate judge determined that a prevailing party in a district court litigation could be entitled to an award of attorneys’ fees based solely on conduct during an inter partes review (IPR) proceeding. In September...more
On Friday, the PTAB’s Precedential Opinion Panel, colloquially referred to as “the POP,” ruled that the one-year window to file inter partes review (“IPR”) petitions begins once a complaint alleging infringement is...more
Addressing the applicability of issue preclusion in inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found that a patent owner’s arguments on appeal were precluded based on similar...more
The Patent Trial and Appeal Board (the “Board”) vacated its institution decision and terminated an inter partes review (IPR) filed by Mylan Pharmaceuticals, Inc. (“Mylan”) based on Mylan’s prior counterclaim seeking a...more
Voluntary Dismissal, Real Party in Interest, and Privity—A Trap for the Unwary - An inter partes review is time barred, and may not be instituted, if a petitioner was served with a complaint alleging infringement of the...more
On January 11, 2019, Dex Media filed a Petition for Writ of Certiorari seeking review of the Federal Circuit’s decision in Click-To-Call Tech. v. Ingenio, Inc., 899 F.3d 1321 (Fed. Cir. 2018) (en banc in relevant part)....more
As reported in a prior post, DexMedia, Inc. previously filed an Application for Extension of Time to File a Petition for a Writ of Certiorari requesting an extension of 30 days in which to file a cert petition challenging the...more
As reported in a prior post, the Federal Circuit in Click-To-Call Tech. v. Ingenio, Inc., 2015-1242 (Fed. Cir. Aug. 16, 2018) (en banc) found in a divided 10-2 en banc decision that a voluntary dismissal without prejudice of...more
After a lengthy and circuitous patent proceeding between plaintiff O.F. Mossberg & Sons (“Mossberg”) and defendants Timney Triggers, LLC and its related manufacturing entity (collectively, “Timney”), which ultimately resulted...more
Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more
In Click-To-Call Tech. v. Ingenio, Inc., 2015-1242, slip op. (Fed. Cir. Aug. 16, 2018) (en banc), the Federal Circuit found that a voluntary dismissal without prejudice of a district court litigation does not reset the...more
Federal Circuit Summary - Before Lourie, Dyk, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The section 315(b) time-bar for IPRs applies even when the underlying complaint alleging infringement...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
PATENT CASE OF THE WEEK - Click-to-Call Technologies, LP v. Ingenio, Inc., Appeal No. 2015-1242 (Fed. Cir. Aug. 16, 2018) In an appeal of an inter partes review, the Federal Circuit reviewed for the first time the...more
In Click-To-Call Tech. v. Ingenio, Inc., 2015-1242, slip op. (Fed. Cir. Aug. 16, 2018) (en banc), the Federal Circuit found that the PTAB’s treatment of voluntary dismissal without prejudice of a district court litigation as...more