News & Analysis as of

Parallel Proceedings Patents

Akin Gump Strauss Hauer & Feld LLP

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

Erise IP

Eye on IPRs, May 2024: Lululemon Earns Partial IPR Win Against Nike; USPTO Issues Proposed IPR Rules

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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: PTAB issues initial decisions on Lululemon-Nike IPRs - Lululemon, whose...more

Wolf, Greenfield & Sacks, P.C.

[Webinar] Mid-Year Litigation and PTAB Review - June 26th, 9:00 pm - 10:00 pm ET

Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more

Wolf, Greenfield & Sacks, P.C.

[Webinar] Mid-Year Litigation and PTAB Review - June 26th, 12:00 pm - 1:00 pm ET

Join Wolf Greenfield for a mid-year review of litigation and PTAB trends at 12:00pm ET or 9:00pm ET. This webinar will cover: 2024/2025 patent litigation trends: ITC domestic industry, double patenting, forum shopping,...more

McDermott Will & Emery

When Is It Really Over? If Additional Proceedings Are Needed, Judgment Is Not Final

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The US Court of Appeals for the Federal Circuit, factually distinguishing the concept of finality in this case from its earlier decision in Fresenius USA v. Baxter Int’l, vacated and remanded a district court’s amended final...more

American Conference Institute (ACI)

[Event] 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement - May 29th - 30th, Washington, DC

Returning to Washington in May, ACI’s 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement is your opportunity to learn from and network with key members of the ITC Bench, senior ITC Attorneys and leading...more

Erise IP

Eye on IPRs, February 2024: Supreme Court Passes on Fintiv Challenge, Parallel IPR/District Court Litigation, First Precedential...

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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: SCOTUS Won’t Hear Challenge to PTAB’s Fintiv Rule- The U.S. Supreme...more

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

2023 PTAB Year in Review: Analysis & Trends: The Staying Power of Fintiv: The Effect of Parallel Litigation at the PTAB in 2023

In 2023, Fintiv—the precedential Order issued in 2020 that established a six-factor framework that the Patent Trial and Appeal Board (PTAB) applies when evaluating whether to exercise its discretion to institute an America...more

Wolf, Greenfield & Sacks, P.C.

[Hybrid Event] Damage Control: Mitigating ITC Remedial Orders with Effective Redesign and Parallel Litigation Strategies -...

Join litigation shareholder Libbie DiMarco as she breaks down the latest developments for mitigating ITC remedial orders with effective litigation strategies ranging from product redesigns (and when to introduce them) to PTAB...more

Venable LLP

[Ongoing Program] Life Sciences Series - IPRs, PGRs, and the BPCIA - October 17th, 1:00 pm - 2:00 pm ET

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We are excited to announce Venable’s inaugural Life Sciences Webinar Series. This month-long series will explore the intricacies and latest developments that shape the life sciences industry. Join us as we hear from our...more

Jones Day

PTAB Issues Back-to-Back Fintiv Denials After Dry Spell

Jones Day on

The PTAB recently issued back-to-back Fintiv denials. The first denial issued on May 4, 2023. Read here about Samsung Electronics Co. Ltd. v. California Institute of Tech., No. IPR2023-00130, Paper 10 (P.T.A.B. May 4,...more

Haug Partners LLP

A U.S. View on the UPC – Part 1: The Basic Case Structure of an Infringement Action

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On June 1, 2023, the new European Unified Patent Court (UPC) will open its doors, and enforcement of European patents in (currently) 17 contract member states will be possible with one action. This series of articles –...more

Morgan Lewis

USPTO Unleashes Wave of PTAB Rule Proposals

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The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more

American Conference Institute (ACI)

[Event] 18th Annual Paragraph IV Disputes - April 19th - 20th, New York, NY

Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Best Medical Int’l, Inc. v. Elekta Inc., 46 F.4th...

Varian filed two petitions for IPR of BMI’s ’096 patent, which the Board instituted. Elekta filed copycat petitions and successfully joined Varian’s two instituted IPRs. A previously filed, parallel ex parte reexamination on...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: DBN Holding v. Int’l Trade Comm’n, 26 F.4th 1363...

This appeal marked the fourth Federal Circuit decision in a series of cases arising from BriarTek IP Inc.’s patents on two-way global satellite communication devices. BriarTek sought to enforce it patents against multiple...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Troutman Pepper

Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast

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Please join Troutman Pepper’s Intellectual Property and Health Sciences Practice Group for the second season and first installment of our podcast series focused on strategy, trends, and other happenings at the PTAB. In this...more

Farella Braun + Martel LLP

PTO Director’s Fintiv Guidance Gives Petitioners New Tools to Avoid Discretionary Denial

The Patent Trial and Appeal Board's 2020 Apple Inc. v. Fintiv Inc. decision established six factors that guide its discretionary denial of an inter partes review or post-grant review petition in view of a parallel court case....more

Morgan Lewis

PTAB Considers Interim Fintiv Guidance in Refusing to Exercise Discretion to Deny Institution

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The Patent Trial and Appeal Board recently granted the institution of an inter partes review in Samsung Electronics Co. v. Staton Techiya, LLC, despite the existence of a parallel proceeding in the US District Court for the...more

Goodwin

Fintiv 2.0: USPTO Director Issues Guidance Softening Risk of Discretionary Denial

Goodwin on

Newly appointed USPTO Director Kathi Vidal issued a set of interim procedures clarifying how the Patent Trial and Appeal Board (PTAB or Board) should apply its Fintiv decision going forward. Vidal’s guidance, which will...more

Akin Gump Strauss Hauer & Feld LLP

USPTO: Compelling Evidence of Unpatentability Forecloses Fintiv Denial

The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more

Akin Gump Strauss Hauer & Feld LLP

Interim USPTO Guidance: Compelling Evidence of Unpatentability Forecloses Fintiv Denial

Key Points - On June 21, 2022, USPTO Director Katherine K. Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.” Under...more

Morgan Lewis

USPTO Director Clarifies PTAB’s Application of Fintiv to Limit Discretionary Denials

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The USPTO has issued interim procedures curbing the PTAB’s discretionary denials over post-grant proceedings associated with parallel ITC proceedings or district court litigation. ...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Provides Guidance on PTAB Discretionary Denials of Challenges Based on Parallel Litigation

On June 22, 2022, the U.S. Patent and Trademark Office issued two documents regarding the Patent Trial and Appeals Board's discretionary denials of post-grant challenges based on parallel litigation: a retrospective study of...more

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