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PTAB Refuses to Ignore Reference Where Patent Owner Fails to Overcome Prima Facie Evidence of ‘Different Inventive Entity’

The Patent Trial and Appeal Board determined that a reference could be used as prior art because patent owner failed to provide sufficient evidence that the prior art’s disclosure was invented by all four named inventors, and...more

Federal Circuit Vacates and Remands District Court’s Fee Award Due to Consideration of Irrelevant 'Red Flags'

The Federal Circuit vacated a district court’s fee award because the district court considered certain information that was not relevant to the question of whether plaintiff’s case was exceptional. Specifically, the Federal...more

Expert Testimony Excluded under Kyocera Where Party Failed to Establish its Expert Possessed the Necessary 'Advanced Training and...

The Federal Circuit’s decision in Kyocera Senco Industrial Tools Inc. v. International Trade Commission articulated a bright-line test for patent expert admissibility: to testify from the perspective of a “person of ordinary...more

District Court in 9th Circuit Finds That Heightened Pleading Standard Applies to All Prongs of False Patent Marking Claim

The Central District of California ruled that the heightened pleading standard of Federal Rule of Civil Procedure Rule 9(b) applies to all three prongs of a false patent marking claim, including the third prong, competitive...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

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

Without Concrete Evidence of Potential Infringement Liability, Petitioner Lacked Standing to Challenge PTAB’s Final Written...

The Federal Circuit dismissed an appeal from an inter partes review (“IPR”) final written decision for lack of standing where it found the appellant failed to provide evidence sufficient to show it suffered an injury in fact....more

PTAB Rejects Argument of Alleged Master Plan to Circumvent IPR Time Bar

The Patent Trial and Appeal Board rejected a patent owner’s argument that the Board should exercise its discretion to deny a petitioner’s inter partes review (IPR) petition because Petitioner failed to name a time-barred real...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

Patent Owner’s Unpatentability Concession in IPR Insufficient to Trigger Estoppel of System Prior Art in District Court

The Eastern District of Texas has rejected a plaintiff’s argument that if a patent owner concedes in an inter partes review (IPR) that a prior art reference discloses all elements of a patent claim, the reference necessarily...more

PTAB: Discovery Requests Targeting Objective Evidence of Nonobviousness Denied Under Garmin Framework

The Patent Trial and Appeal Board denied a patent owner’s motion for additional discovery of documents—from petitioners, real parties-in-interest, and third parties—because patent owner failed to show that such discovery...more

Federal Circuit: PTAB May Not Institute on Grounds Left out of IPR Petition

The Federal Circuit recently addressed whether the Patent Trial and Appeal Board (PTAB) can institute inter partes review (IPR) on a ground not advanced by the petitioner, as well as whether the general knowledge of a person...more

Eastern District of Texas Rejects Apple’s Request for a Stay Under the Customer-Suit Exception to the First-to-File Rule Based in...

Chief Judge Rodney Gilstrap of the Eastern District of Texas issued a decision addressing motions to stay a patent infringement case under the “customer-suit exception” to the general first-to-file rule. Judge Gilstrap...more

Federal Circuit: PTAB Erred In Presuming Nexus Where Commercial Product Was Not Coextensive With Patented Invention

The Federal Circuit vacated and remanded the Patent Trial and Appeal Board’s (PTAB) decisions in two inter partes review (IPR) proceedings, finding that the PTAB applied the wrong standard when it presumed there was a nexus...more

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