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
Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement. A recent motion met such a fate in Ice Castles, LLC v....more
When filing an IPR, petitioners should be careful not to take for granted one of the most fundamental aspects of challenging validity in this forum: Whether or not the relied upon references qualify as prior art. Pursuant to...more
The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with...more
This blog has previously discussed the Federal Circuit’s decision in Becton, Dickinson and Co. v. Baxter Corp. Englewood, — F.3d —, No. 2020-1937, 2021 WL 2176796 (Fed. Cir. May 28, 2021). See Telepharma Disconnect: Federal...more
This blog has previously discussed the effect of several different types of estoppel. See, e.g., Estoppel Estopped for Remanded Claims, Reminder: Estoppel May Not Preclude Prior-Art Systems, and PGR Estoppel Applies to...more
The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite....more
The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...more
The estoppel statute precludes a defendant who has challenged a claim in an IPR reaching final written decision from later challenging that claim on any ground that it raised or reasonably could have raised during the IPR...more
Be careful not to confuse reprints with new editions when considering books as printed publications under 35 U.S.C. 102(b). In VidStream LLC v. Twitter, Inc., No. 2019-1734, 2020 WL 6937852 (Nov. 25, 2020), the Federal...more
“Printed publication” under 35 U.S.C. § 102(b) is typically construed to encompass any type of document, as long as the document is “publicly accessible.” See, e.g., Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018)....more
In a recent precedential decision, the PTAB emphasized that objective indicia of nonobviousness must have a nexus to the claimed invention. Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, Paper 33 (P.T.A.B. Jan. 24,...more
One of the steps in a proper obviousness analysis is to ascertain the scope and content of the prior art and the differences between the prior art and the claims at issue. Graham v. John Deere Co. of Kan. City, 383 U.S. 1,...more
Throughout the Patent Trial and Appeal Board’s (“PTAB”) history, patent owners have tried to leverage a petitioner’s alleged failure to name all real parties-in-interest (“RPIs”) as a way to achieve denial of an inter partes...more
The PTAB and District Courts do not always see eye to eye when it comes to prior art. On August 21, 2020, the Board issued a trio of final written decisions refusing to invalidate the claims of three patents, two of which...more
In Samsung Elecs Co., Ltd., et al. v. Cellect, LLC, IPR2020-00474, Paper 14 (P.T.A.B. Aug. 17, 2020), the PTAB denied institution of U.S. Patent No. 6,982,740 (“the '740 patent”), finding that the specification did not...more
8/26/2020
/ Claim Construction ,
Denial of Institution ,
Incorporated by Reference ,
Inter Partes Review (IPR) Proceeding ,
Means-Plus-Function ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
POSITA ,
Prior Art ,
Samsung
Both petitions were directed to Patent Owner Tela Innovations, Inc.’s U.S. Patent No. 7,943,966 (“the ’966 patent”). See Intel Corporation v. Tela Innovations, Inc., IPR2019-01228, Paper No. 19 (PTAB January 30, 2020); Intel...more
As was previously noted here, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more
The PTAB recently designated a number of cases regarding procedures for determining whether a prior art reference is a “printed publication.” One opinion regarding the difference in burdens of proving “printed publication”...more
As we noted, the PTAB recently designated two 35 U.S.C. § 325(d) cases precedential and one informative. Here is an in depth review of a first of the precedential designated decisions.
On March 24, 2020, the PTAB...more
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., — F.3d —, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not...more
2/19/2020
/ Final Written Decisions ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
Means-Plus-Function ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Samsung ,
Section 112
In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims. See Rimfrost AS v. Aker Biomarine Antarctic...more
In a series of IPR proceedings between Petitioner Adobe Inc. and Patent Owner RAH Color Technologies LLC, the Patent Trial and Appeal Board declined to extend attorney work product protection to deposition questions seeking...more
1/28/2020
/ Attorney Communications ,
Discovery ,
FRCP 26 ,
Inter Partes Review (IPR) Proceeding ,
Motion to Compel ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Testimony ,
Work-Product Doctrine
A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a “printed publication”? On December 20, 2019, the...more
On February 28, 2019, GREE, Inc. (“GREE”) filed a Complaint against Supercell Oy (“Supercell”) for patent infringement of U.S. Patent No. 9,597,594 (the “’594 Patent”), directed to a method for controlling a computer to...more
11/13/2019
/ Affirmative Defenses ,
Estoppel ,
Final Written Decisions ,
FRCP 12(f) ,
Motion To Strike ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Prior Art ,
Question of Fact ,
SAS Institute Inc. v Iancu ,
Section 101