The Patent Trial and Appeal Board exercised its discretion under General Plastic to deny institution of a follow-on petitioner’s request for inter partes review despite determining that the petitioner did not have a...more
The Patent Trial and Appeal Board denied institution of an inter partes review petition because a prior art patent figure did not provide exact dimensions, and therefore could not meet the relevant claim limitation. On...more
The Patent Trial and Appeal Board instituted an inter partes review over patent owner’s objections that the petition did not timely identify all real parties-in-interest (RPI) and was filed by a phantom legal entity after...more
7/29/2024
/ California ,
Delaware ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Limited Liability Company (LLC) ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Reorganizations
The Director of the U.S. Patent and Trademark Office vacated and remanded a decision from the Patent Trial and Appeal Board discretionarily denying institution of an inter partes review petition. The Director concluded that...more
The Patent Trial and Appeal Board granted institution of inter partes review after petitioner submitted a Sotera stipulation to patent owner via email, several days after patent owner’s preliminary response. The board...more
The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority...more
Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of...more
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
A Petitioner filed a request for rehearing and a request for Precedential Opinion Panel review after the Patent Trial and Appeal Board (PTAB or the “Board”) rejected its petition for post-grant review. The Director of the...more
The Patent Trial and Appeal Board (PTAB) granted Petitioner’s motions to sanction Patent Owner for failure to meet its duty of candor and fair dealing in five related inter partes review proceedings. The PTAB found that...more
The District Court for the District of New Jersey recently denied a defendant’s motion for summary judgment which sought to invalidate a dependent claim on preclusion grounds based on the PTAB’s invalidation of the related...more
The Patent Trial and Appeal Board recently rejected an inter partes review petition that relied on a conclusory and unsupported expert declaration. The expert’s written testimony, which repeated portions of the petition...more
In a recent decision, the Federal Circuit affirmed the PTAB’s policy of permitting claim amendments unrelated to the IPR proceedings when the amended claims also included amendments that respond to a ground of...more
In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv...more
In its latest decision in a series of interferences related to the CRISPR gene-editing system, the Patent Trial and Appeal Board (PTAB) granted priority to The Broad Institute, MIT and Harvard (collectively, “Broad”) for...more
The Federal Circuit recently clarified that the scope of IPR estoppel in district courts includes prior art grounds that were raised or reasonably could have been raised in a petition for inter partes review (IPR), reversing...more
A judge in the Eastern District of Virginia recently held that cancellation of independent claims in an inter partes review (IPR) did not preclude the plaintiff from asserting infringement based on the doctrine of equivalents...more
The PTAB recently denied a motion to correct clerical mistakes under 37 C.F.R. § 42.104(c) because the corrections presented substantive new evidence that would have had a substantial impact on the proceedings and prejudiced...more
When bringing a lawsuit for a declaratory judgment of non-infringement of a patent, careful pleading may allow plaintiffs to avoid the restrictions against later seeking inter partes review (IPR) of that patent, while also...more
- The Supreme Court ruled 7-2 in Thryv, Inc. v. Click-to-Call Technologies, LP, that the PTAB’s application of the one-year time limit for petitions for inter partes review, set out in 35 U.S.C. § 315(b), is not subject to...more
4/23/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
The Patent Trial and Appeal Board (PTAB or Board) recently designated two decisions as precedential and one decision as informative, marking its first precedential and informative designations for 2020. In two of the...more
A federal judge in the Northern District of California recently rejected an argument that would have expanded inter partes review (IPR) estoppel seemingly beyond the plain reading of 35 U.S.C. § 315(e)(2). The plaintiff had...more
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
A district court in California has granted-in-part a Plaintiff’s motion for summary judgment of no invalidity under 35 U.S.C. § 103 due to inter partes review (IPR) estoppel. During the pendency of the litigation, Defendants...more
1/14/2019
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motion for Summary Judgment ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art
In Worlds Inc. v. Bungie, Inc., the Federal Circuit remanded an appeal from an inter partes review (“IPR”) instructing the Patent Trial and Appeal Board (“Board”) to reweigh the evidence in a manner that placed the ultimate...more
9/24/2018
/ Appeals ,
Burden of Persuasion ,
Burden of Proof ,
Collateral Estoppel ,
Final Written Decisions ,
Intellectual Property Agreements ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Remand ,
Time-Barred Claims ,
Video Games