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
The PTAB has previously applied to IPR filings the statutory grace period under 35 U.S.C. § 21(b) for USPTO papers and fees due on a weekend or holiday. See Samsung Elecs. Co. v. Immersion Corp., Case IPR2018-01468, slip op....more
On September 6, 2019, a PTAB panel including USPTO Director Andrei Iancu instituted inter partes review (“IPR”) of U.S. Patent No. 9,279,259 (“the ‘259 Patent”). The ‘259 Patent is directed to a tile lippage removal system...more
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
Reexamination can be stayed pending IPR proceedings for good cause shown. The PTAB recently found good cause for a stay had been established when the reexamination proceedings and IPR proceedings had only a single claim in...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
Relying on 35 U.S.C. § 314(a), the Patent Trial and Appeal Board has articulated its reluctance to review “follow-on” petitions challenging the validity of patents that have been previously subjected to inter partes review....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 a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring systems patentable, and allowed substitution of amended claims for others deemed unpatentable. See Syrinix Inc. v. Blacoh Fluid...more
Petitioners beware. The PTAB will not “play archaeologist with the record” or assume the burden of making arguments if the Petitioner fails to present the asserted reasons for invalidity with the required specificity. Amazon...more
In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny inter partes review of Perfect Company’s (“Patent Owner”) patent. Adaptics Ltd. v. Perfect Co., IPR2018-01596 (March 6, 2019). A panel...more
Presidio Components, Inc. (“Presidio”) petitioned for inter partes review (IPR) of U.S. Patent No. 6,144,547 (the “‘547 Patent”), which American Technical Ceramics Corp. and AVX Corporation (together “plaintiffs”) asserted...more
On December 6, 2018, the PTAB hosted a Boardside Chat webinar on hearsay and authentication. The Administrative Patent Judges presenting the webinar were Michael Zecher, Tom Giannetti, and Grace Obermann.
The webinar began...more
On November 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several...more
In Shenzhen Silver Star Intelligent Tech. v. iRobot Corp., IPR2018-00761, Paper 15 (PTAB Sept. 5, 2018), the PTAB denied institution of Shenzhen Silver Star’s IPR petition in view of an earlier challenge to the same patent by...more
In a recent PTAB decision, Petitioners learned the importance of addressing decisions from related IPRs when making arguments before the PTAB. Apple, Inc. and FitBit, Inc. v. Valencell, Inc., Case IPR2017-00319 (PTAB Aug. 6,...more
The PTAB’s decision on whether or not to institute trial in a particular matter is discretionary. See Harmonic Inc. v. Avid Tech, Inc., 815 F.3d 1356, 1367 (Fed. Cir. 2016) (“the PTO is permitted, but never compelled, to...more
In Ericsson Inc. v. Intellectual Ventures I LLC, No. 2016-1671, 2018 WL 2407172 (Fed. Cir. 2018), a divided panel of the Federal Circuit reversed a PTAB decision that had sustained the patentability of claim 1 of U.S. Patent...more
In an appeal from final written decisions of the Patent Trial and Appeal Board (“Board”) in six inter partes review (IPR) proceedings where Ford Motor Co. (“Ford”) challenged two patents owned by Paice LLC (“Paice”), the...more
On October 24th, the PTAB issued the following notice, designating the following decisions, which address 35 U.S.C. § 325(d), as informative....more
On October 24th, the PTAB designated three decisions related to discretionary petition denials under 35 U.S.C. § 325(d) as informative. Unified Patents, Inc. v. Berman is discussed below. We previously reported on Hospira,...more
In a unanimous opinion issued on February 14, 2017, a three-judge panel of the Federal Circuit vacated the Board’s obviousness determination in Apple’s inter partes review against PersonalWeb and remanded for further...more