The Federal Circuit dismissed Platinum Optics Technology Inc.’s (PTOT) appeal from an IPR decision, finding the challenged claims of Viavi’s U.S. Patent No. 9,354,369 not unpatentable, because PTOT failed to establish an...more
Koss filed a patent infringement suit against Bose asserting the ’155, ’934, and ’025 patents, after which Bose petitioned for inter partes review of all three patents before the PTAB. The district court case was stayed...more
8/13/2024
/ Appeals ,
Final Judgment ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Mootness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101
In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB”) decision in holding that certain claims of the Virtek patent (U.S. Patent No. 10,052,734) were unpatentable as obvious. See...more
The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had...more
In a recent decision, 25 F.4th 1035 (Fed. Cir. 2022), the Federal Circuit dismissed for lack of jurisdiction an appeal of the PTAB’s decision that estopped a Petitioner from maintaining a third IPR that challenged the same...more
In General Access Sols., Ltd. v. Sprint Spectrum, et al., No. 2:20-cv-00007-RWS, ECF No. 128 (E.D. Tex. Dec. 1, 2020), the Eastern District of Texas denied a motion to strike invalidity defenses as barred by IPR estoppel for...more
District courts commonly stay patent litigation cases pending inter parties review (IPR) that assesses the validity of the patents-in-suit before the Patent Trial and Appeal Board (PTAB). Such stay may be lifted or extended...more
Recently, we reported about the Supreme Court’s decision holding that the AIA’s “no appeal” provision in 35 U.S.C. § 314(d) means that the PTAB’s decision not to institute IPR because a petition is time barred under 35 U.S.C....more
This week, the United States Supreme Court interpreted the scope of the AIA’s “no appeal” provision found in 35 U.S.C. § 314(d) (“Section 314(d)”). Thryv, Inc. v. Click-to-Call Techs, L.P., No. 18-916, 2020 WL 1906544 (Apr....more
4/27/2020
/ § 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
January 17 Update: On January 17, each of the parties filed responses to the rehearing petitions -
As we have previously discussed on this blog and elsewhere, the Federal Circuit’s decision in Arthrex v. Smith & Nephew...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
The Federal Circuit and the patent world continues to grapple with the court’s decision in Arthrex v. Smith & Nephew. Since our last updates, the parties in Arthrex and other cases have continued the push for en banc...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
USPTO ,
Vacated
The Federal Circuit’s decision in Arthrex v. Smith & Nephew excited and disrupted the patent world... Inter partes review (IPR) reshaped patent law and patent litigation this decade after the America Invents Act took effect....more
12/17/2019
/ Administrative Patent Judges ,
America Invents Act ,
Appeals ,
Appellate Briefs ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
Following on Judge Newman’s dissent in Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., parties are seeking to preserve their rights by challenging the Federal Circuit’s holding that a party’s failure to raise...more
Following up on a November 4th oral argument (accessible here) that focused on the Arthrex Appointments Clause issue, the Federal Circuit has requested additional briefing from Polaris, Kingston, and the U.S. regarding the...more
11/15/2019
/ Administrative Patent Judges ,
Administrative Procedure ,
Appeals ,
Appointments Clause ,
Inter Partes Review (IPR) Proceeding ,
Non-Judicial Settlement Agreements ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Retroactivity
In a recent decision, the PTAB decided to institute inter partes review (“IPR”) of U.S. Patent No. 7,937,394 B2 despite Patent Owner’s claims that Petitioner engaged in gamesmanship and asserted references and combinations...more
In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying...more
Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding video data. The...more
On May 8, 2019, the Patent Trial and Appeal Board denied institution of inter partes review in William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, holding that the mere fact that prior art references...more
In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section...more
6/28/2019
/ § 315(b) ,
Appeals ,
Chevron Deference ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Mergers ,
Patent Infringement ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Time-Barred Claims
In past decisions, the Federal Circuit has made clear that a petitioner appealing a PTAB’s final written decision upholding the patentability of challenged claims after an AIA trial must establish Article III standing. In...more
In an order designated precedential, the PTAB terminated an instituted IPR proceeding after the petitioner failed to establish that no real parties in interest (“RPI”) or privies had been served with a complaint more than one...more
Further to the PTAB’s efforts to improve the ability of patent owners to amend claims in an AIA trial via the Motion to Amend Pilot program, the USPTO recently issued guidance on other avenues for amending claims of patents...more
On October 29, 2018, the Office published a request for comments (“RFC”) on a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively...more
The America Invents Act (“AIA”), also called the Patent Reform Act of 2011, was enacted to overhaul the U.S. patent system and harmonize the domestic patent laws with those in the rest of the world. The AIA also created new...more
1/29/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Third-Party Relationships
The USPTO has revised its standard operating procedure (SOP) governing the assignment of judges to panels in Patent Trial and Appeal Board (PTAB) cases. The SOP, available here, provides guidance to Board administrative...more