“Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int’l, Inc. v....more
2/24/2025
/ Discovery ,
Evidence ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Motion to Dismiss ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Prior Art ,
Section 103
On May 20, the Federal Circuit held fees incurred in voluntary parallel IPR proceedings were not recoverable under 35 U.S.C. § 285. Dragon Intell. Prop. LLC v. DISH Network L.L.C., No. 2022-1621, slip op. at 8 (Fed. Cir. May...more
During an inter partes review (IPR) initiated by Ingenico, the PTAB found certain claims from three patents held by IOEngine to be unpatentable. The patents at issue are directed to secure communications for portable devices...more
In denying inter partes review in OBM, Inc. & Cholla Energy LLC v. Lancium LLC, the PTAB again made clear that “technical availability” of a reference is not enough to establish it is a printed publication. Here, the PTAB...more
Director Vidal recently issued sanctions against OpenSky Industries (“OpenSky”) for attempted extortion during settlement negotiations and abuse of the IPR process for US Patent 7,725,759 and awarded $413,264.15 to VLSI...more
2/26/2024
/ Attorney's Fees ,
Expert Testimony ,
Extortion ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Sanctions ,
Settlement Negotiations
Within the past few weeks, the PTAB has issued new guidance addressing a number of important issues including the use of applicant admitted prior art, the Director review process, and changes to PTAB hearings going...more
Recently, Cloudflare Inc. succeeded in convincing the PTAB to institute in IPR2021-00969 against a Sable Network, Inc.’s patent directed toward data flow. While the institution itself is not out of the ordinary—the...more
12/8/2021
/ Crowdsourcing ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Portfolios ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
A Covered Business Method (“CBM”) patent review permits a petitioner to challenge a patent having claims “used in the practice, administration, or management of a financial product or service,” and that do not claim a...more