In a decision today, the Federal Circuit excused the lack of an oath with a declaration, finding no prejudice resulted. Case No. 2022-2133. Liquidia Technologies filed an IPR petition challenging claims of United Therapeutics...more
Today, the Federal Circuit issued a precedential decision vacating and remanding a PTAB decision based on an erroneous implicit claim construction. Google v. EcoFactor, Case Nos. 2022-1750, 2022-1767 (Fed. Cir. Feb. 7, 2024)....more
Volvo Penta of the Americas, LLC v. Brunswick Corporation (2022-1765, Decided August 24, 2023) -
Patent litigators are well aware of the challenges of overcoming the substantial evidence standard on appeal from an adverse...more
Today, the Director of the U.S. Patent Office designated the final written decision in Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) precedential as to section II.E.3. In that section, the Board...more
Parties in inter partes review proceedings often dispute whether a reply to a patent owner response is truly responsive or instead an attempt to introduce new arguments that are not reasonably tied to those set out in the...more
Today, in a precedential decision, the Federal Circuit provided guidance regarding the acceptable breadth of a Reply in an inter partes review proceeding. Rembrandt Diagnostics, LP v. Alere, Inc., Case. No. 21-1796 (Aug. 11,...more
Yesterday, in Ironburg Inventions Ltd. v. Valve Corp., Case No. 21-2296 (Fed. Cir. Apr. 3, 2023), the Federal Circuit held that for estoppel to apply under 35 U.S.C. § 315(e)(2), a patent holder must prove, by a preponderance...more
A Patent Owner in an inter partes review may amend the claims by motion, but the motion “may be denied” if the amendment does not respond to a ground of unpatentability or attempts to broaden the claim. 37 C.F.R. § 42.121....more
In a precedential opinion issued this week, the Federal Circuit held that Applicant Admitted Prior Art (“AAPA”) does not constitute “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b) and thus...more
In a recent decision, the Federal Circuit held that the PTAB violated the Administrative Procedures Act (“APA”) by adopting in its final written decision a claim construction that neither party had proposed. In Qualcomm Inc....more
Today, in an opinion by Chief Justice Roberts, the Supreme court issued its opinion in U.S. v. Arthrex, Inc., vacating the Federal Circuit's opinion in Arthrex v. Smith and Nephew. The Court agreed with the Federal Circuit...more
6/22/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
Much attention has been focused on the Board’s discretionary denial of petitions based on the factors set out in the Fintiv decision. The focus is well-deserved—since the Fintiv decision issued last year, over 150 petitions...more
The PTAB’s precedential Fintiv decision (Apple v. Fintiv, Inc, IPR2020-00019) held that the PTAB could deny institution of an IPR, even within the one year statutory bar, if (1) district court litigation has progressed...more
Today, the USPTO issued a memorandum providing guidance on the use of Applicant Admitted Prior Art (“AAPA”). The guidance limits the use of AAPA, stating “admissions by the applicant in the specification of the challenged...more
On May 5th, the Board designated an order regarding discretionary denial precedential. Apple v. Fintiv, Inc, IPR2020-00019, Paper 11 (P.T.A.B. Mar. 20, 2020) (precedential). In the two months since that designation, more than...more
In a 7-2 decision by Justice Ginsburg, the Supreme Court held today that §314(d)’s bar on judicial review of the agency’s decision to institute inter partes review precluded appeal of the PTAB's application of §315(b)’s time...more
4/21/2020
/ § 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
In December of last year, in the precedential Hulu case, the PTAB found that for purposes of institution under 35 U.S.C. § 311(b), a petitioner must show a reasonable likelihood that an asserted reference qualifies as a...more
In one of the first decisions to address the scope of post-grant review (“PGR”) estoppel under 35 U.S.C. §325(e)(2), the Eastern District of Texas recently found that the statute means what it says. GREE, Inc. V. Supercell...more
On Halloween, the Federal Circuit held that the appointment of PTAB judges was unconstitutional, and struck down a provision of the Patent Act that made it difficult to remove PTAB judges. Their solution was limited to...more
In a case decided yesterday, the Federal Circuit found that the Board abused its discretion by denying Honeywell’s request to file a motion for leave to file a certificate of correction. Honeywell International Inc. v. Arkema...more
In an August 12, 2019 order, the Federal Circuit asked the government what deference, if any, should the court give PTAB Precedential Opinion Panel ("POP") decisions. Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir....more
Kilpatrick Townsend partners John Alemanni, Tina McKeon, and Wab Kadaba recently presented to clients on the topic of “PTAB Trials Insights & Strategies – Leveraging Recent Developments at the PTAB” at the annual Kilpatrick...more
Yesterday (July 15th), the PTAB published a second update to its Trial Practice Guide. This second update is twice as long as the August 2018 update and relies extensively on the many recently-designated precedential and...more
On May 20, 2019, the PTAB exercised its discretion under 35 U.S.C. § 314 and denied one of two related petitions filed on the same day by a petitioner challenging the same patent. Comcast Cable Communications LLC v. Rovi...more
AVX Corp. (“AVX”) filed a Petition for Inter Partes Review challenging all claims of U.S. 6,661,639 owned by Presidio Components, Inc. (Presidio). The Board found claims 13-16 and 18 unpatentable and affirmed the...more