The PTAB has been grappling with how to manage IPR petitions for patents that are also being challenged in federal district court, particularly when the district court is set to determine the patent validity prior to the...more
8/26/2020
/ §314(a) ,
Apple ,
Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Precedential Opinion ,
Trial Practice Guidance
On December 11, 2019, the PTAB designated two additional decisions as “informative.” Such informative decisions are not binding on subsequent panels, but are meant to provide guidance on recurring issues encountered by PTAB...more
1/9/2020
/ Burden of Proof ,
Combined References ,
Evidentiary Standards ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
POSITA ,
Post-Grant Review ,
Prior Art
Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by...more
7/5/2019
/ §315(e) ,
Comcast ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Judicial Discretion ,
Obviousness ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Trial Practice Guidance ,
USPTO
Recently, the PTO issued a Notice providing guidance on how the Board treats reissue and reexamination proceedings while an AIA trial on the same patent is co-pending. The guidance comes in response to public comments and...more
ENDO PHARM, INC., v. ACTAVIS LLC -
Before Wallach, Clevenger, and Stoll. Appeal from the United States District Court for the District of Delaware....more
A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB. Assignor estoppel...more
1/23/2019
/ Appeals ,
Assignment of Inventions ,
Assignor Estoppel ,
Concurrent Litigation ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Summary Judgment
On June 1, 2018 the U.S. Patent and Trademark Office designated a Board order in Western Digital Corporation v. SPEX Technologies, Inc. as informative on the issue of Motions to Amend during an IPR. At the same time, the...more
Federal Circuit Summaries -
Before Reyna, Linn, and Hughes. Petition for Writ of Mandamus from the District Court for the Eastern District of Texas.
Summary: A corporation incorporated in a state having multiple...more
Federal Circuit Summaries -
Before Lourie, O’Malley, and Taranto. Appeal from the United States District Court for the Northern District of Texas.
Summary: Claims may be determined patent ineligible on the pleadings...more
Federal Circuit Summaries -
Before Reyna, Wallach, and Stoll. Appeal from the United States District Court for the Middle District of Georgia.
Summary: A complaint that attaches the asserted patents, specifically...more
Before Moore, Mayer, and Stoll. Appeal from the United States District Court for the District of New Jersey.
Summary: Plain claim language will not be narrowed based on a patent’s specification unless the patentee clearly...more
The court in Koninklijke Philips N.V. v. Wangs All. Corp., No. 14:cv-12298, 2018 WL 283893 (D. Mass. Jan. 2, 2018) denied summary judgement of no invalidity, finding that the Federal Circuit’s holding in Shaw forecloses a...more
In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications...more
4/17/2018
/ Covered Business Method Proceedings ,
Estoppel ,
Final Written Decisions ,
Motions in Limine ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Subsequent Litigation
Federal Circuit Summaries -
Before Newman, Wallach, and Stoll. Appeal from the Patent Trial and Appeal Board.
Summary: Disclosure of a species may provide written description support for a claimed genus when the field...more
Federal Circuit Summaries -
Before Moore, Schall, and O’Malley. Appeal from the Northern District of Illinois.
Summary: A plaintiff need not prove its case of patent infringement at the pleading stage. To the extent a...more
3/1/2018
/ Amended Complaints ,
Appeals ,
Claim Construction ,
Dismissals ,
Federal Pleading Requirements ,
Federal Rule 12(b)(6) ,
Method Claims ,
Motion to Dismiss ,
Patent Infringement ,
Patents ,
Reversal ,
Twombly/Iqbal Pleading Standard
Federal Circuit Summaries -
Before Dyk, Wallach, and Hughes. Appeal from the United States District Court for the District of Delaware.
Summary: A distribution agreement qualifies as an invalidating “offer for sale”...more
2/7/2018
/ Abbreviated New Drug Application (ANDA) ,
Appeals ,
Generic Drugs ,
Hospira ,
Offers ,
On-Sale Bar ,
Patents ,
Pharmaceutical Patents ,
Remand ,
Reversal ,
Sales & Distribution Agreements
On October 18, 2017, the PTAB designated as “precedential” a major portion of its prior decision in General Plastic Industrial Co., Ltd. v. Canon Kabushki Kaisha. The decision was previously designated “informative,” but now,...more
A magistrate judge in the Eastern District of Texas recommended in Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc. Case No. 6:11-cv-492 (E.D.Tex. September 25, 2017) that Hewlett-Packard (“HP”) should be estopped...more
The PTAB’s Chief Administrative Patent Judge and Deputy Chief Administrative Patent Judge joined an expanded PTAB panel that adopted the seven NVIDIA factors and denied institution of the Petitioner’s follow-on petitions in...more
On August 30, 2017, the PTAB issued a Final Written Decision in M & P Golf, LLC (d/b/a Cool Clubs) v. Max Out Golf, LLC, IPR2016-00784, Paper 43 (P.T.A.B August 30, 2017), entering adverse judgement on the original patent...more
On remand from the Federal Circuit, the PTAB granted Veritas’s Supplemental Motion to Amend for one substitute claim and denied the motion with respect to a second claim in Veeam Software Corporation v. Veritas Technologies...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
The Federal Circuit vacated and remanded the PTAB’s final written decision holding that claims directed to steel making methods were obvious in Rovalma, S.A. v. Bohler-Edelstahl GmbH & Co. KG, No. 2016-2233 (Fed. Cir. May 11,...more
A magistrate judge in the Eastern District of Texas recommended in Biscotti, Inc. v. Microsoft Corp., No. 2:13-CV-01015, DI 191 (E.D. Tex. May 11, 2017) that Microsoft should be estopped from asserting invalidity grounds that...more
5/19/2017
/ Concurrent Litigation ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Microsoft ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Stays
In a Final Written Decision in Johns Manville Corp. v. Knauf Insulation, Inc., IPR2016-00130, Paper 35 (P.T.A.B. May 8, 2017), the PTAB found that petitioner Johns Manville (JM) was not estopped from raising its own company...more