The Board declined to institute inter partes review because Petitioner failed to identify adequate corresponding structure in the challenged patent that performed the function of claim limitation that was to be construed...more
On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more
5/10/2024
/ Denial of Institution ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Vacated
The PTAB recently denied Trend Micro, Inc.’s (Petitioner) inter partes review petition against Open Text, Inc. and Webroot, Inc. (Patent Owners) challenging all claims of U.S. Pat. No. 8,201,243. Trend Micro, Inc. v. Open...more
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 Patent Trial and Appeal Board (PTAB) recently dismissed and terminated inter partes review challenging claims of U.S. Patent No. 8,495,167 (“the ’167 patent”). Netflix, Inc. v. Owner, IPR2022-01568, Paper 29 (PTAB March...more
It goes without saying that claim construction is an important issue, but the PTAB’s recent decision in Netflix, Inc. v. DIVX, LLC, IPR2020-00558, Paper 66 (PTAB Feb. 22, 2024), shows not only that reasonable minds can differ...more
3/29/2024
/ Claim Construction ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art
On March 4, 2024, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) regarding Motion To Amend (“MTA”) Practice and Procedures...more
3/25/2024
/ Comment Period ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pilot Programs ,
Proposed Rules ,
USPTO
Recently, the Patent Trial and Appeals Board (“PTAB”) granted a request for rehearing of a decision that denied an institution of inter partes review and then instituted a trial on all the challenged claims on all the grounds...more
In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that challenged a...more
In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the...more
USPTO Director Kathi Vidal recently designated precedential section II.E.3 of Penumbra, Inc. v. RapidPulse, Inc. and clarified that the priority analysis for an AIA reference patent as prior art is different than for a...more
In IPR2023-01058, the PTAB declined to institute IPR, finding that Patent Owner had disclaimed all challenged claims under 35 U.S.C. § 243(a), in compliance with 37 C.F.R. § 1.321(a), such that there was no basis on which to...more
The PTAB recently denied IPR institution in Sophos v. Open Text because the petitioner failed to show a reasonable likelihood that the asserted reference was, in fact, prior art. IPR2023-00732, Paper 23 (November 2, 2023)....more
On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review of...more
11/20/2023
/ Administrative Law Judge (ALJ) ,
America Invents Act ,
Comment Period ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
In an increasingly rare exercise of discretion, the PTAB denied institution of inter partes review under Fintiv in Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Limited, IPR2023-00587. The PTAB reasoned that...more
In Elekta Limited v. Zap Surgical Systems, Inc., the Federal Circuit recently affirmed a PTAB decision finding certain claims of a patent owned by Elekta Limited (“Elekta”) to be unpatentable, even though the PTAB decision...more
11/10/2023
/ Evidentiary Standards ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents
The PTAB recently granted institution of inter partes review despite the Patent Owner not receiving the petition for the proceeding until three business days after the statutory deadline. See Kahoot! ASA and Kahoot Edu, Inc.,...more
11/6/2023
/ Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Service of Process ,
Statutory Deadlines ,
USPTO
The PTAB requires that all petitioners in IPR and PGR proceedings disclose the real party(ies)-in-interest. While that might seem like a mere formality, a false disclosure can lead to very harsh consequences....more
The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents. Zynga Inc. v. IGT, IPR2022-00199-32. In doing so, the PTAB further held that, contrary to...more
10/27/2023
/ Estoppel ,
Final Written Decisions ,
Gaming ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Interference Claims ,
Inventors ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
POSITA ,
Prior Art ,
Software ,
USPTO ,
Zynga
At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner’s primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date...more
10/20/2023
/ Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Inventors ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
On March 15, 2022, Facet Technologies, LLC (Plaintiff/Patent Owner) filed an infringement suit against LifeScan, Inc. (Defendant/Petitioner) in U.S. District Court for infringement of U.S. Patent No. 8,840,635 (the ’635...more
On August 24, 2023, USPTO Director Kathi Vidal vacated a PTAB decision denying institution of inter partes review in Keysight Technologies, Inc. v. Centripetal Networks, Inc. and remanded the case for further proceedings. ...more
Institution of an IPR is automatically barred if the “petition requesting the proceeding is filed more than 1 year after the date on which the petitioner…is served with the complaint alleging infringement of the patent.” 35...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
On July 17, 2023, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review petition based on the stature of a related U.S. District Court of...more