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
/ America Invents Act ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
Regulatory Agenda ,
Regulatory Reform ,
USPTO
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
Typically, a Motion for Joinder to an earlier post-grant review (“PGR”) must be filed within one month of the institution of the earlier PGR. 37 C.F.R. § 42.222(b).While the Patent Trial and Appeal Board (“PTAB”) does have...more
The PTAB recently denied a motion to dismiss a Revised Petition and terminate an inter partes review (IPR) proceeding despite Petitioner’s alleged withdrawal of the Original Petition and failure to comply with the word limit...more
4/4/2022
/ Certificates of Compliance ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Motion to Dismiss ,
Motion to Withdraw ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
Regulatory Requirements ,
Tesla
In the PTAB’s recent decision in Code 200 v. Bright Data Ltd., IPR2021-01503, Paper No. 13 (PTAB Mar. 14, 2022), the PTAB expounded upon the circumstances in which joinder of a “me-too” case under § 315(b) was not...more
Following the grant of institution of a recent IPR petition in the matter of Satco Products, Inc. v. The Regents of the University of California, IPR2021-00662, Paper 26 (PTAB Feb. 11, 2022) concerning U.S. Patent No....more
Recently, the Patent Trial and Appeals Board (PTAB) declined to terminate an inter partes review (IPR) proceeding despite the Petitioner’s alleged failure to identify all the real parties-in-interest (RPIs)....more
The institution rate for post-grant petitions in FY 2022 through the end of January 2022 (Oct. 1, 2021 through January 31, 2022) stands at 63% (279 instituted, 164 denied) compared to 59% in the previous fiscal year....more
The patent fight between Caltech and Broadcom/Apple made waves this month when the Federal Circuit vacated the $1.1 billion infringement award that Caltech had won in district court....more
2/22/2022
/ Apple ,
Broadcom ,
Estoppel ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Vacated
Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b) (emphasis added). An...more
2/10/2022
/ 35 U.S.C. § 311(b) ,
Apple ,
CAFC ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Prior Art ,
Qualcomm ,
Statutory Interpretation
This blog has previously discussed PTAB’s exercise of discretion under Section 325(d). Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d) and instituted inter...more
The institution rate for post-grant petitions in FY 2022 through the end of November 2021 (Oct. 1, 2021 through Nov. 30, 2021) stands at 66% (138 instituted, 71 denied) compared to 59% in the previous fiscal year....more