Claim construction is the heart of validity and infringement for almost every patent proceeding. Yet, at least two recent cert petitions brought from separate cases by Intel and Akeva have argued the Federal Circuit has two...more
[co-author: Yuke Wang, Patent Agent]
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...more
4/27/2021
/ Claim Construction ,
Evidence ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition for Writ of Certiorari ,
Prior Art ,
Reversal ,
Split of Authority
In John Bean, the patent owner’s only competitor, Morris & Associates, responded to a demand letter with evidence of invalidity. John Bean Technologies Corporation v. Morris & Assocs. Inc., Cases 2020-1090, 2020-1148, Slip...more
From the beginning of AIA proceedings, Petitioners that have lost at institution decision phase have tried using Mandamus to circumvent the statutory lack of appeal from institution decisions. Mylan Laboratories Ltd. v....more
4/1/2021
/ § 315(b) ,
America Invents Act ,
Claims Limitations Period ,
Denial of Institution ,
Due Process ,
Inter Partes Review (IPR) Proceeding ,
Mandamus Petitions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
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
3/31/2021
/ § 315(b) ,
America Invents Act ,
Claims Limitations Period ,
Demand Letter ,
Denial of Institution ,
Due Process ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Mandamus Petitions ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO ,
Willful Infringement
In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation), where the Board instituted trial, i.e., did not exercise its...more
1/27/2021
/ Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Judicial Discretion ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
USPTO
In ABS Global, Inc. v Cytonome/ST, LLC, the Federal Circuit dismissed a Petitioner’s appeal from a U.S. Patent Trial and Appeal Board (“PTAB”) final written decision when it determined that a Patent Owner’s voluntary...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
1/25/2021
/ Appeals ,
Denial of Institution ,
Dismissals ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Mootness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Precedential Opinion ,
USPTO
The U.S. Patent and Trademark Office Patent Trial and Appeal Board issued a final rule regarding institution, sur replies, and presumptions.
First, the Board changes 37 C.F.R. §§ 42.108 and 42.208 to implement SAS...more
The U.S. Patent and Trademark Office Patent Trial and Appeal Board has elevated three panel decisions to precedential this month.
RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020)...more
In Vidstream v. Twitter, the Federal Circuit affirmed unpatentability of Vidstream’s patent in view of a book even though the copyright page of the version submitted had a later copyright date. Vidstream, LLC. v. Twitter,...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
12/18/2020
/ Final Rules ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
RPI ,
SAS Institute Inc. v Iancu ,
USPTO
As a follow up to our May 2020 article, and taking no side in this article, I write to remind the bar that on November 19, 2020 the Comment period ends for the latest Federal Register Notice on maybe the hottest topic at the...more
In its decision to remand, the Federal Circuit (1) held the Board’s non-analogous art test was wrong and articulated a new test for the Board to follow on remand, and (2) left it up to the Board to make the ultimate decision...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
11/18/2020
/ Comment Period ,
Federal Register ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand
Petitioners beware – the Board holds you to what is submitted on filing day for required documents. In Shenzhen Aurora Technology Company, Ltd. v. Putco, Inc., IPR2020-00670, “[t]he Petition relies on foreign language...more
10/28/2020
/ Affidavits ,
Evidence ,
Filing Requirements ,
Foreign Language ,
Inadvertent Errors ,
Litigation Strategies ,
Patent Filings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Translations
In Network-1 Technologies, Inc. v. Hewlett-Packard Company, the Federal Circuit vacated and remanded the district court’s holding that joinder petitioner Hewlett Packard (“HP”) (1) could have tried to raise new grounds in its...more
10/26/2020
/ §315(e) ,
Appeals ,
Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Judgment As A Matter Of Law ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Vacated
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
10/23/2020
/ §315(e) ,
Administrative Patent Judges ,
Administrative Procedure ,
Arthrex Inc v Smith & Nephew Inc ,
Certiorari ,
Constitutional Challenges ,
Estoppel ,
Joinder ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
SCOTUS ,
United States v Arthrex Inc
This month we first refresh our readers on Shaw and SAS, and then we will look at two recent exemplary cases that we feel are illustrative of the current trends for petitioner estoppel.
We will show that the trend in the...more
In view of the Supreme Court’s Thryv decision, the Federal Circuit recently reissued its original March 2020 decision in Facebook v. Windy City (Windy City I) after granting Facebook’s petition for rehearing and denying...more
9/22/2020
/ § 314(d) ,
35 U.S.C. § 315(c) ,
Appeals ,
Appellate Review ,
Cuozzo Speed Technologies v Lee ,
Facebook ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Litigation Strategies ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Thryv Inc v Click-To-Call Technologies LP
Last month’s newsletter discussed Alacritech, Inc. v. Intel Corp, where patent owner Alacritech appealed a final written decision (FWD) of the Patent Trial and Appeal Board (“Board”) for inter partes review (IPR)...more
9/19/2020
/ Administrative Procedure Act ,
Appeals ,
Burden of Persuasion ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Invalidity ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Reaffirmation ,
Substantial Evidence Standard
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
9/18/2020
/ Administrative Procedure Act ,
Appeals ,
Appellate Review ,
Estoppel ,
Facebook ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
In Alacritech, Inc. v. Intel Corp, Judge Stoll held that under the Administrative Procedure Act (APA) “[the Federal Circuit’s] review of a patentability determination is confined to ‘the grounds upon which the Board actually...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
As reported in our December 2019 newsletter, in Lectrosonics v. Zaxcom the Patent Trial and Appeal Board (PTAB or Board) granted Zaxcom’s motion to amend and, under a nexus-analysis framework, found each of the substitute...more