Director Vidal recently vacated the Patent Trial and Appeal Board’s (PTAB) decision to deny institution of three petitions for inter partes review (IPR), citing insufficient explanation for denial under 35 U.S.C. §325(d). ...more
The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023). There, the PTAB held that (1) a Sotera...more
On November 6, 2023, the PTAB issued an decision instituting inter partes review of U.S. Patent No. 10,681,009 B2 (“the ’009 patent”) in Keysight Technologies, Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 16 (PTAB...more
On May 16, 2023, Director Katherine Vidal vacated a portion of a final written decision regarding real parties in interest (“RPIs”) in Unified Patents, LLC v. Memory Web, LLC, IPR2021-01413. Director Vidal held that the...more
Absent exceptional circumstances, the Federal Circuit will generally not consider arguments that a party failed to present in the tribunal under review. In Netflix, Inc. v. DivX, LLC, the Federal Circuit held that IPR...more
Under 35 U.S.C. § 315(e)(2), a patent challenger in an inter partes review (IPR) that reaches a final written decision is estopped from arguing in a district court or the ITC that the challenged patent is invalid based on...more
The PTAB recently granted a joint request to expunge an exhibit and contemporaneously denied the Patent Owner’s request for authorization to file a Motion for Leave to Submit the same exhibit in Bausch & Lomb Inc. v....more
Samsung Electronics Co. (“Samsung”) recently faced the issue of determining whether U.S. Patent No. 11,163,823 (“the ‘823 patent”) is a pre- or post-AIA patent. Hedging its bets, Samsung concurrently filed two petitions—one...more
On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an...more
In the latest development of OpenSky Industries v. VLSI Technology, USPTO Director Kathi Vidal has ordered sua sponte Director review of a PTAB panel’s decision on remand to institute OpenSky’s IPR challenge to a patent owned...more
The Patent Trial and Appeal Board (“PTAB”) recently denied a Petitioner’s Motion for Additional Discovery. Scientific Design Co., Inc. v. Shell Oil Co., IPR2021-01537, Paper 18 (PTAB Aug. 12, 2022). In an inter partes review...more
The USPTO released a study in June 2022 that analyzed the prevalence of Fintiv denials occurring between January 1, 2019 and December 31, 2021. The Study focused on data illustrating how often patent owners raised parallel...more
On June 14, 2022, the Board instituted Zynga Inc.’s (“Zynga”) petition for IPR against U.S. Patent No. 7,168,089 (the “’089 patent”), rejecting Patent Owner IGT’s argument that interference estoppel should preclude...more
During the Patent Trial and Appeal Board (“PTAB”) Boardside Chat on July 7, 2022, discussion focused on Director Katherine Vidal’s interim guidance on discretionary denials under the Board’s precedential Apple v. Fintiv...more
An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more
3/24/2022
/ Administrative Law Judge (ALJ) ,
America Invents Act ,
Estoppel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Priority Patent Claims
The Patent Trial and Appeal Board (“PTAB”) recently denied a Motion for Additional Discovery because the movant could not prove beyond mere speculation that the requested documents would be useful to show witness scripting....more
1/24/2022
/ Additional Discovery ,
Discovery ,
Evidence ,
Federal Rules of Evidence ,
Garmin Factors ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Scope of Discovery Requests
Under the Board’s rules, a patent owner gets to have the last word in a PTAB proceeding by filing a sur-reply to the petitioner’s reply. Sur-replies may only respond to arguments raised in the reply, and the “sur-reply … may...more
11/15/2021
/ Admissible Evidence ,
Depositions ,
Evidence ,
Exhibit Issues ,
Intellectual Property Protection ,
Litigation Strategies ,
Netflix ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Samsung ,
Trial Exhibits
On May 26, 2021, the United States District Court for the Western District of Washington denied both defendant Valve Corporation’s (“Valve”) motion for judgment as a matter of law or a new trial, and plaintiff Ironburg...more
After an initial denial, the PTAB recently granted Unified Patents’ motions for entry of protective order and for seal in Unified Patents, LLC v. Electronics and Telecommunications Research Institute, IPR2020-01048, Paper 33...more
The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a final rule regarding the allocation of the burden of persuasion for the patentability of substitute claims on...more
As we noted, the PTAB recently designated two 35 U.S.C. § 325(d) cases precedential and one informative. Here is an in depth review of a first of the precedential designated decisions.
On March 24, 2020, the PTAB...more
In its en banc decision in Aqua Products, Inc. v. Matal, the Federal Circuit addressed the question of who bears the burden of proving that claims amended in IPR proceedings are or are not patentable. The decision, issued on...more