In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings. The panelists stressed that...more
In LG Electronics v. Immervision, the Federal Circuit clarified the standard for evaluating whether a prior art reference includes an obvious typographical error. See 39 F.4th 1364, 1365 (Fed. Cir. 2022). Under this...more
On September 21, 2021 a PTAB panel granted a motion to strike two Exhibits as not timely submitted by the Petitioner in Samsung Electronics America, Inc. v. Kannuu PTY LTD, IPR2020-00738. Those exhibits were submitted by the...more
While creativity has its place in advocacy, it can be taken too far. The Petitioner learned this lesson the hard way in Unified Patents Inc. v. American Patents LLC, IPR2019-00482, Paper 132 (P.T.A.B. Aug. 3, 2022). In this...more
On June 10, 2022, the PTAB in Apple Inc. v. MemoryWeb LLC denied Apple’s “conditional” IPR petition but instituted review of Apple’s concurrently-filed PGR petition, finding that MemoryWeb’s U.S. Patent No. 11,017,020 (“the...more
On August 5, 2022, in Thader v. Vidal, the Federal Circuit affirmed that patent inventors must be natural persons, rejecting a technologist's attempt to name an artificial intelligence as the sole inventor on patent...more
On July 6, 2022, a panel of three Patent Trial and Appeal Board (“PTAB”) administrative patent judges granted institution of inter partes review (“IPR”) in STMicroelectronics, Inc. v. Trustees of Purdue University. See...more
On June 1, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“PTAB”) decisions in ClearOne, Inc. v. Shure Acquisition Holdings, Inc. regarding classification of the...more
On June 1, 2022, the Patent Trial and Appeal Board issued a Final Written Decision finding unpatentable three claims of AutoStore Technology AS’s (“AutoStore’s”) U.S. Patent No. 10,294,025 (“the ’025 patent”), while finding...more
On May 3, 2022, a panel of three PTAB administrative patent judges granted a motion for additional discovery in TCL Industries Holdings Co., Ltd. v. Parkervision, Inc., IPR2021-00985, (PTAB 2022), in which the PTAB deemed the...more
The Federal Circuit’s decision on May 27, 2022 in Arthrex Inc. v. Smith & Nephew Inc. et al., set forth that Patent Commissioner, Drew Hirshfeld, was within the bounds of the U.S. Supreme Court’s United States v. Arthrex...more
On May 9, 2022, the Patent Trial and Appeal Board denied Hillman Group, Inc.’s (“Hillman’s”) three petitions for inter partes review. See The Hillman Group, Inc. v. Hy-Ko Products Co. LLC, IPR2022-00168, -00169, and -00174....more
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
Since the passage of the America Invents Act in 2012, both petitioners and patent owners have expressed concerns regarding the procedures and practices of the Patent Trial and Appeal Board (PTAB). In an effort to respond to...more
6/24/2022
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U.S. Patent and Trademark Office (“USPTO”) Director Vidal is initiating sua sponte review of the Patent Trial and Appeal Board’s (“PTAB”) decisions to institute inter partes review of two patents owned by VLSI Technology LLC,...more
On June 16, Senators Leahy, Cornyn, and Tillis introduced the PTAB Reform Act of 2022. The full text of the bill is available...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 a previous post from July 2021, we discussed the interim process for Director review in PTAB proceedings post-Arthrex. Since then, only three out of over 175 requests for Director review of a Final Written Decision have...more
On May 26, 2022, the Patent Office issued its “Interim Process for PTAB Decision Circulation And Internal PTAB Review”. The Office issued the Process to explain its new procedures for circulating pre-issuance decisions, which...more
In XR Communications, LLC v. D-Link Systems, Inc. Et. Al., a judge in the Central District of California found that certain asserted claims claiming to wireless communication technology were barred by the doctrine of...more
F5 Networks, Inc. (“Petitioner”) filed a Petition requesting an IPR. WSOU Investments, LLC d/b/a/ Brazos Licensing and Development (“Patent Owner”) filed a Preliminary Response. ...more
On March 3, 2022, Andrew Hirshfeld, the Commissioner for Patents and acting Director of the USPTO, issued the third post-Arthrex grant of Director Review for two separate Final Written Decisions issued by the PTAB based on a...more
In Laboratoire Francais du Fractionnement et des Biotechnologies S.A. v. Novo Nordisk Healthcare AG, the Patent Trial and Appeal Board (PTAB) denied the Petitioner’s motion to terminate the inter partes review (IPR) and to...more
The PTAB recently denied institution of inter partes review (IPR) for claims 1 and 46 of U.S. 7,464,040 in eClinicalWorks, LLC et al. v. Decapolis Systems, LLC, IPR2022-0229, Paper 10 (PTAB April 13, 2022). The denial was...more
The Board denied post grant review in Palo Alto Networks, Inc. v. Centripetal Networks, Inc. under 35 U.S.C. § 325(d) after applying the Advanced Bionics framework as informed by the factors outlined in Becton. IPR2021-01520...more