Netflix petitioned for IPR of a DivX patent related to “trick play” functionality, which allows a user to fast forward, rewind, and scene skip frames. Netflix’s petition argued that the challenged claims would have been...more
Zap filed an IPR petition alleging obviousness of a patent owned by Elekta. The petition relied on a combination of two references. The Board found a reason to combine the references and ultimately found obviousness of the...more
Almirall’s patent claims recite: [a]bout 4% w/w of a polymeric viscosity builder comprising acrylamide/sodium acryloyldimethyl taurate copolymer….
The Board instituted an IPR on the patent, where the primary reference...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
2/8/2023
/ § 314(d) ,
§ 315(b) ,
35 U.S.C. §315(e)(1) ,
Abuse of Discretion ,
Administrative Patent Judges ,
Administrative Procedure Act ,
America Invents Act ,
Anticipation ,
Apple ,
Appointments Clause ,
Arbitrary and Capricious ,
Arthrex Inc v Smith & Nephew Inc ,
Article III ,
Artificial Intelligence ,
Broadcom ,
Burden of Persuasion ,
Burden of Production ,
Confidentiality Agreements ,
Consent Order ,
Constitutional Challenges ,
Covenant Not to Sue ,
Director of the USPTO ,
Doctrine of Equivalents ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Expert Testimony ,
Failure To Disclose ,
Federal Vacancies Reform Act ,
Final Written Decisions ,
Forum Selection ,
Google ,
Indefiniteness ,
Intel ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Inventors ,
Joint Inventors ,
Jurisdiction ,
Lack of Jurisdiction ,
Likelihood of Confusion ,
Motion to Amend ,
Motion to Terminate ,
Obviousness ,
Obviousness-Type Double Patenting (ODP) ,
Parallel Proceedings ,
Patent Act ,
Patent Applications ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Preliminary Injunctions ,
Preponderance of the Evidence ,
Prior Art ,
Qualcomm ,
Real Party in Interest ,
Remand ,
Section 101 ,
Section 112 ,
Separation of Powers ,
Standing ,
Statutory Authority ,
Sua Sponte ,
Substantial Evidence ,
Testimony ,
Time-Barred Claims ,
Trademark Application ,
Trademark Infringement ,
Trademark Litigation ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Vacated ,
Written Descriptions
General Electric Co. (GE) petitioned for inter partes review (IPR) of claims 3 and 16 of Raytheon Technologies Corp.’s U.S. Patent No. 9,695,751 related to gas turbine engines. The U.S. Patent Trial and Appeal Board (Board)...more
[co-author: Jamie Dohopolski]
Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
2/9/2022
/ § 314(d) ,
35 U.S.C. §315(e)(1) ,
Absolute Intervening Rights Doctrine ,
Abuse of Discretion ,
Administrative Patent Judges ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Appointments Clause ,
Arbitrary and Capricious ,
Article of Manufacture ,
Assignor Estoppel ,
Burden of Proof ,
Claim Construction ,
Collateral Estoppel ,
Commercial Success ,
Confidential Information ,
Constitutional Challenges ,
Demand Letter ,
Denial of Institution ,
Design Patent ,
Director of the USPTO ,
Dismissals ,
Doctrine of Prosecution Disclaimer ,
Due Process ,
Equitable Estoppel ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Executive Branch ,
Executive Powers ,
Federal Rules of Evidence ,
Final Written Decisions ,
Forum Selection ,
FRCP 52(c) ,
GATT ,
Inferior Officers ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Intervening Acts ,
Inventions ,
Issue Preclusion ,
Judicial Review ,
Lack of Authority ,
Lack of Jurisdiction ,
Likelihood of Success ,
Minerva Surgical Inc. v Hologic Inc. ,
Motion for Summary Judgment ,
Motivation to Combine ,
Nexus ,
Non-Disclosure Agreement ,
Nonobvious ,
Obviousness ,
Ornamental Design ,
Parallel Proceedings ,
Patent Applications ,
Patent Filings ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition for Writ of Certiorari ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-GATT ,
Preliminary Injunctions ,
Principle Officers ,
Printed Publications ,
Prior Art ,
Real Party in Interest ,
Remand ,
Reversal ,
Rule 36 ,
Scope of Review ,
SCOTUS ,
Section 325(d) ,
Sua Sponte ,
Substantial Evidence ,
Totality of Evidence ,
United States v Arthrex Inc ,
USPTO ,
Vacated ,
Writ of Mandamus
Security People lost an inter partes review (IPR) and appealed to the Federal Circuit. It lost that appeal and was denied certiorari at the Supreme Court. Security People never raised constitutional arguments in any of these...more
2/22/2021
/ Appeals ,
Constitutional Challenges ,
Denial of Certiorari ,
Dismissals ,
Due Process ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patents ,
Subject Matter Jurisdiction ,
USPTO
Our “Innovation Conversations” series continues with our guest Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sterne Kessler Directors Trey...more
11/25/2020
/ Copyright ,
Copyright Litigation ,
Foreign Patent Applications ,
Innovation ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Section 101 ,
Trademark Litigation ,
Trademarks ,
USPTO
Our “Innovation Conversations” series continues with our guest Andrei Iancu, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office. Sterne Kessler Directors Trey...more
11/25/2020
/ Copyright ,
Copyright Litigation ,
Foreign Patent Applications ,
Innovation ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Section 101 ,
Trademark Litigation ,
Trademarks ,
USPTO
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
7/31/2020
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Nonobvious ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Precedential Opinion ,
PTAB Precedential Opinion Panel (POP) ,
Substitute Claims ,
USPTO
Henny Penny petitioned for inter partes review (IPR) of Frymaster’s U.S. Patent 8,497,691. The ’691 patent relates to deep fryers and describes a system for measuring the state of cooking oil degradation with a “total polar...more
As PTAB practitioners know, statistics on successful motions to amend are quite dismal. But in a recent case, the PTAB shed light on what may be a successful strategy for patent owners to amend their claims in an Inter Partes...more
1/3/2020
/ Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Motion to Amend ,
Nexus ,
Nonobvious ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Experienced PTAB practitioners know that, in an IPR, assuming each claim element is in the asserted prior art, the rubber meets the road on the reason-to-combine arguments. In Henny Penny Corp. v. Frymaster, LLC, the Federal...more
10/4/2019
/ Alternative Pleadings ,
America Invents Act ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Nonobvious ,
Obviousness ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Reaffirmation ,
Responsive Pleadings
The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more
The Federal Circuit’s recent decision in Shaw Industries Group, Inc. v. Automated Creel Systems, Inc., has shed some light on the estoppel provisions in America Invents Act (AIA) post-grant proceedings. Like the estoppels in...more
We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter...more
7/8/2016
/ Admissible Evidence ,
America Invents Act ,
Appeals ,
Covered Business Method Proceedings ,
Declaration ,
Estoppel ,
Evidence ,
Expert Witness ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review
On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more
8/26/2015
/ Attorney-Client Privilege ,
Broadest Reasonable Interpretation Standard ,
Covered Business Method Proceedings ,
Discovery ,
Duty of Candor ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Motion to Amend ,
Patent Owner Preliminary Response ,
Patent Ownership ,
Patents ,
Pleadings ,
Post-Grant Review ,
Proposed Amendments ,
Testimony ,
USPTO