Yesterday the PTAB designated as precedential two decisions related to the standard for denying institution under 35 U.S.C. §§ 314(a) and 325(d). The first decision rested primarily on § 325(d) but also considered some of the...more
The PTAB designated as precedential a recent order regarding Motions to Amend. Lectrosonics, Inc. v. Zaxcom, Inc., Case IPR2018-01129, 01130, Paper 15 (Feb. 25, 2019) (Designated Precedential: Mar. 7, 2019). The order sets...more
Kilpatrick Townsend Partners John Alemanni, Wab Kadaba, and Tina McKeon recently presented on the latest developments and precedential proceedings regarding post grant proceedings.
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The Federal Circuit issued an en banc decision in Click-to-Call Technologies, LP v. Ingenio, Inc, Yellow Pages.com, LLC (Case No. 2015-1242), finding that a voluntary dismissal without prejudice of a lawsuit does not reset...more
The Federal Circuit determined in an opinion last week that tribal sovereign immunity does not apply in an inter partes review (IPR) challenge to patent validity. Saint Regis Mohawk Tribe v. Mylan Pharmaceuticals Inc. (July...more
In SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that an IPR final written decision must address every challenged claim. The PTAB responded by issuing amended Institution Decisions, adding all...more
The PTAB has declined to institute proceedings on challenged claims on the basis that one or more of the challenged claims is indefinite. See, e.g., IPR2015-00662, IPR2013-00036. While this may seem like a positive outcome...more
Petitioners are best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to (1) the limited space Petitioner has to make its arguments, and (2) estoppel based...more
The Supreme Court issued two decisions today in the cases of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., and SAS Institute Inc. v. Iancu, addressing inter partes review (IPR). In Oil States, the...more
4/25/2018
/ America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SCOTUS ,
Seventh Amendment ,
USPTO
In a recent Northern District of California case, the Court granted a restraining order requiring the defendant to dismiss a set of PTAB petitions. Dodocase VR, Inc. v. Merchsource, LLC, et al., No. 17-cv-07088-EDL (N.D....more
The U.S. District Court for the District of Massachusetts recently found that the scope of inter partes review estoppel was limited to only those grounds specifically instituted in an IPR proceeding, applying the standard set...more
The Supreme Court held oral argument Monday, November 27, in the case of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al. to address the question of whether inter partes review (IPR) proceedings before...more
The Patent Trial and Appeal Board (“PTAB”) recently issued a Standard Operating Procedure (“SOP”) for remands from the Federal Circuit. Remands of America Invents Act trials (IPR, CBM, and PGR) and ex parte and reexamination...more
The full U.S. Court of Appeals for the Federal Circuit held in Aqua Products “the burden of proving the unpatentability of all claims in an IPR—both original and amended—is on the petitioner.” Five opinions (including one...more
The U.S. Court of Appeals for the Federal Circuit held that to find a “required and established place of business” for venue in a civil action for patent infringement, the court must identify “a physical place, of business,...more
UPDATE: The PTAB has designated this decision as “informative,” which is a category one step below precedential used to provide guidance for future panels.
An expanded panel of the PTAB recently provided additional guidance...more
Earlier this year, the Federal Circuit held that statements made by patentees in an inter partes review (IPR) can constitute prosecution disclaimer. Aylus Networks, Inc. v. Apple Inc., No. 2016-1599 (Fed. Cir. May 11, 2017)....more
An expanded panel of the PTAB recently provided additional guidance on when it may exercise its discretion not to institute proceedings. Petitioner General Plastic Industrial Co., Ltd. originally challenged two patents in IPR...more
In a recent decision, Judges Wallach and Dyk filed a concurring opinion to express their concerns regarding joinder and expanded panels at the Board. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., Case No....more
Kilpatrick Townsend’s John Alemanni, Allison Dobson, Matthew Holohan, and Wab Kadaba recently presented on navigating the Post-Grant landscape. Here are three key takeaways from their presentation.
The STRONG Patents Act...more
In 2012, the American Invents Act created Inter Partes review (“IPR”) and related proceedings that allowed parties to request that the Patent Office institute a trial to determine the patentability of issued claims. Over the...more
On Wednesday, September 7, the Patent Trial and Appeal Board found that U.S. Patent Nos. 7,670,358 and 7,776,072 were not obvious, in part because certain cited prior art was not “disseminated or otherwise made available...more
On Tuesday, August 30, the Federal Circuit vacated the Patent Trial and Appeal Board’s denial of a motion to amend. Veritas Techs. LLC v. Veeam Software Corp., Case No. 15-1894. The Federal Circuit found that “the Board was...more
On Monday, June 20, the Supreme Court issued a much anticipated decision upholding the PTAB's use of the Broadest Reasonable Interpretation standard for claim construction and confirming that the decision to institute is...more
The PTAB recently relied on the Federal Circuit’s decision in Enfish, LLC v. Microsoft Corp. in refusing to institute a Covered Business Method review of a patent for a system for managing personal electronic information....more