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PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

Federal Circuit Upholds USPTO Authority to Estop Patentees from Obtaining Patent Claims 'Not Patentably Distinct' from Previously...

The Federal Circuit recently upheld the USPTO’s authority under the estoppel provision 37 C.F.R. § 42.73(d)(3)(i) to prohibit a patent owner from obtaining patent claims that are not patentably distinct from claims previously...more

USPTO Director Cracks Down on Patent Owner for Withholding Data and Imposes Severe Sanctions

The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more

WDTX Magistrate Judge Grants Stay Pending IPR Despite Alleged Delay Tactics by Defendant in Pre-Suit Negotiations

The Western District of Texas granted a motion to stay a patent infringement lawsuit pending inter partes review not only because doing so would simplify the issues in the still-early litigation and reduce the burden on the...more

IPR “Booted” Where Images on Webpage Coupled with Evidence of Sales Deemed Insufficient to Establish Prior Art Status

The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the...more

Merger of District Court Dismissals Torpedoes Appeal from PTAB Decision at Federal Circuit

The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had...more

Federal Circuit: Aggregated Financial Data From Different Products That Practice Different Patents Insufficient to Establish...

In an appeal from the ITC, the Federal Circuit recently held that by presenting cumulative financial data across different products that practice various combinations of patents, appellant provided insufficient evidence for a...more

Federal Circuit: Section 285 Does Not Permit Recovery of Fees Incurred in IPRs Nor Does it Extend to Counsel

The Federal Circuit recently ruled that a petitioner in an inter partes review (IPR) proceeding with related district court litigation cannot recover attorneys’ fees under 35 U.S.C. § 285. The Federal Circuit further held...more

Protective Order Forecloses Participation of Litigation Counsel in Motion to Amend Process Before the PTAB

In keeping with precedent, a judge in the District of Delaware issued an oral order restricting the extent of permissible activities for litigation counsel before the Patent Trial and Appeal Board. The order resolved a...more

Redacted Settlement Offers Are Admissible to Show Industry Practice for FRAND Negotiations

In advance of a new trial to determine damages for patent infringement, a district court denied plaintiff’s motion to preclude defendants from introducing the terms of plaintiff’s settlement offers. The district court...more

Section 271(e)(1) Safe Harbor Applies to Importation Regardless of Intent or Actual Use

A divided panel of the Federal Circuit affirmed a district court’s grant of summary judgment of noninfringement, holding that importation of two product samples into the U.S. was reasonably related to obtaining FDA approval...more

Handshake Agreement to Assign Does Not Provide Basis for Common Ownership to Exclude Prior Art

The Patent Trial and Appeal Board recently found claims directed to a web-based point of sale system and method unpatentable as obvious after conducting a thorough examination of whether a reference with one common inventor...more

PTAB: Merely Showing That a Reference Was Available on the Internet Does Not Establish ‘Public Accessibility’

The Patent Trial and Appeal Board denied institution of a petition for IPR after determining that the petitioner failed to show a reasonable likelihood that its primary asserted reference, which was available through the...more

PTAB: Digital Repository’s Listed Publication Date Insufficient to Show Reference’s Public Availability

The Patent Trial and Appeal Board denied institution of an inter partes review after determining that petitioner failed to establish public availability of a prior art reference based on an alleged publication date listed in...more

Two Product Market for Bamboo Decking Justifies Jury Award of Lost Profits

The District of Delaware recently held that evidence addressing a lack of non-infringing alternatives from the perspective of the market as a whole, as opposed to customer-by-customer, may suffice when the market includes...more

Defendant’s Non-Party Status to IPRs Dooms Stay Request, Despite Agreement to Be Bound by IPR Estoppel

The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on...more

Federal Circuit: Preliminary Means Preliminary

The Federal Circuit recently held that the Patent Trial and Appeal Board (PTAB) was within its discretion to reach different conclusions in a Final Written Decision (FWD) than those provided in preliminary guidance regarding...more

The Claims as a Whole, Including ‘Conventional’ Physical Components, Must Be Considered at Step One of the Alice Test for...

On remand from the Federal Circuit following an appeal and petition for cert to the Supreme Court, the District of Delaware considered whether the claims remaining in dispute in American Axle v. Neapco were invalid for...more

IPR Estoppel Does Not Prohibit ‘Cumulative or Duplicative’ System-Based Invalidity Defenses in District Court Actions

In a decision denying summary judgment, the District of Massachusetts weighed in on an unsettled issue: whether after receiving a final written decision in an inter partes review, a patent challenger is permitted to raise...more

Federal Circuit: Burden of Proof in IPR Estoppel Rests with Patentee, Not Accused Infringer

In an appeal from the United States District Court for the Western District of Washington, the Federal Circuit confirmed that on the issue of inter partes review (IPR) estoppel, the burden of proof rests on the patentee to...more

USPTO Director: Adverse Judgment Not Appropriate Where There Was No 'Unequivocal' Abandonment

The USPTO Director recently conducted sua sponte review of a Patent Trial and Appeal Board decision granting adverse judgment in four IPR proceedings where a panel found that the patent owner had abandoned the contests. In a...more

PTAB Reverses Course and Finds Challenged Patent Claims Unpatentable in Light of Applicant Admitted Prior Art

The Patent Trial and Appeal Board granted a request for rehearing of a final written decision in which it had originally determined that the challenged were not unpatentable. On rehearing, the board found that petitioner’s...more

IPR Petition Denied Due to Expert’s Lack of Relevant Experience

A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan. The patent at issue related to a...more

Industry Praise of Consumer Hair Product Sufficient to Rebut Bald Obviousness Allegations

In a recent inter partes review proceeding, the Patent Trial and Appeal Board relied on compelling evidence of secondary considerations to hold all challenged claims not unpatentable under 35 U.S.C. § 103. Specifically, the...more

Federal Circuit: Indefiniteness Is Not Judged by the “Claim Language, Standing Alone”

Evaluating whether a patent claim is sufficiently “definite” under 35 U.S.C. § 112 requires looking beyond just the claim language itself. The Federal Circuit reaffirmed this fundamental principle in a recent decision...more

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