News & Analysis as of

Burden of Proof Patent Litigation Inter Partes Review (IPR) Proceeding

WilmerHale

Federal Circuit Patent Watch: An Expert Need Not Have Acquired the Requisite Skill Level Prior to the Time of the Invention

WilmerHale on

Precedential and Key Federal Circuit Opinions - WISCONSIN ALUMNI RESEARCH FOUNDATION v. APPLE INC. [OPINION] (2022-1884, 8/28/2024) (Prost, Taranto, and Chen) - Prost, J. The Court affirmed two final judgments of the...more

Fish & Richardson

The Top Three Things Foreign Companies Should Keep in Mind When Considering IPR

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Being sued for patent infringement in the U.S. can be confusing, especially for foreign companies with limited litigation experience. Even more confusing are the multiple options and venues available for responding to patent...more

Sheppard Mullin Richter & Hampton LLP

The Intertwining Nature of Motivation to Combine and Reasonable Expectation of Success

In Elekta Limited v. Zap Surgical Systems, Inc., No. 21-1985 (Fed. Cir. Sept. 21, 2023), the case addresses the interplay between findings related to motivation to combine and reasonable expectation of success in determining...more

Haug Partners LLP

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making.  From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

AEON Law

Patent Poetry: The “Skilled Searcher” and IPR Estoppel

AEON Law on

The Federal Circuit has issued an opinion on the burden of proof for establishing estoppel in a case involving an inter partes review (IPR) petition. The case is Ironburg Inventions Ltd. v. Valve Corp....more

Morgan Lewis

Federal Circuit Clarifies IPR Estoppel Burden

Morgan Lewis on

A recent Federal Circuit opinion clarified that patent owners carry the burden of proving that inter partes review (IPR) estoppel applies to invalidity grounds not included in their IPR petitions. The Federal Circuit also...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Addresses Burden of Proof for IPR Estoppel

On April 3, in Ironburg Inventions Ltd. v. Valve Corp., the Federal Circuit articulated a standard for applying inter partes review (IPR) estoppel on grounds a petitioner “reasonably could have raised” under 35 U.S.C. §...more

Haug Partners LLP

Ethicon’s Surgical Stapler Patent Held Invalid by the Federal Circuit

Haug Partners LLP on

In Ethicon LLC v. Intuitive Surgical, Inc., the Court of Appeals for the Federal Circuit (“CAFC”) upheld a finding from the Patent Trial and Appeal Board (“Board”) the claims of Ethicon’s patent directed to a surgical stapler...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Qualcomm Inc. v. Intel Corp., 6 F.4th 1256 (Fed....

Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2021: Can the PTAB Adopt a New Construction of an Agreed-Upon Term?

In Qualcomm Inc. v. Intel Corp., the Federal Circuit ruled that the Patent Trial and Appeal Board violated patent owner Qualcomm’s rights under the Administrative Procedures Act (APA) by not giving it notice and a chance to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] 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...more

McDermott Will & Emery

Navigating the Interplay Between the ITC, PTAB and District Courts

Recent changes in intellectual property law in the US International Trade Commission (ITC), the Patent Trial and Appeal Board (PTAB) and federal US District Courts have had major impacts on litigation strategy and business...more

Fox Rothschild LLP

Chief Judge Stark Denies Defendants’ Motions To Dismiss Plaintiff’s Complaints Asserting Patent Infringement Due To The Use Of...

Fox Rothschild LLP on

By Memorandum Opinion entered by The Honorable Leonard P. Stark in Stragent, LLC v. BMW of North America, LLC et al., Civil Action No. 20-510-LPS (D.Del. March 25, 2021) (consolidated), the Court denied Defendants’ motions to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Fanduel, Inc. v. Interactive Games LLC, 966 F.3d...

FanDuel petitioned for inter partes review (IPR) of certain claims of Interactive Games’ patent. The Patent Trial and Appeal Board instituted review and found all but dependent claim 6 to be unpatentable as obvious. ...more

Goodwin

Issue Twenty-Nine: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (July 27-31): Gambling on an APA Challenge

It was a moderately eventful week at the Federal Circuit as the judges geared up for their August argument session and perhaps returned from their summer vacations. The Court issued 13 opinions and 2 orders on petitions for a...more

Jones Day

PTAB Institutes Despite ITC Investigation

Jones Day on

In 3Shape A/S v. Align Tech., Inc., IPR2020-00223, Paper 12 (May 26, 2020), the PTAB declined to deny institution of an inter partes review involving a patent challenged in a pending ITC investigation. Despite the advanced...more

McDonnell Boehnen Hulbert & Berghoff LLP

Pfizer Inc. v. Chugai Pharmaceuticals Co. (Fed. Cir. 2020)

The Federal Circuit continued its explication of the standing issue for unsuccessful petitioners in inter partes review (see "Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp. (Fed. Cir. 2020)") in Pfizer Inc. v....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - April 2020: What Evidence Can Demonstrate That A Printed Publication Was Publicly Accessible?

On April 7, 2020, the Patent Trial and Appeal Board (PTAB) clarified what evidence can demonstrate that an asserted reference qualifies as a printed publication. This two-section article will first address four decisions...more

Knobbe Martens

PTAB’s New Informative Decisions Remind IPR Petitioners of Need for Well-Developed Rationale for Combining References

Knobbe Martens on

On December 11, 2019, the PTAB designated two additional decisions as “informative.”  Such informative decisions are not binding on subsequent panels, but are meant to provide guidance on recurring issues encountered by PTAB...more

McDermott Will & Emery

Unrebutted Declaration Supports Public Availability of Prior Art

McDermott Will & Emery on

Addressing the evidentiary showing necessary to prove whether a foreign publication is publicly available, the US Court of Appeals for the Federal Circuit found that the Patent Trial and Appeal Board (PTAB) did not abuse its...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies Burden of Proof on Challenges to Identification of Real Parties-in-Interest in IPR Proceedings

In Worlds Inc. v. Bungie, Inc., the Federal Circuit remanded an appeal from an inter partes review (“IPR”) instructing the Patent Trial and Appeal Board (“Board”) to reweigh the evidence in a manner that placed the ultimate...more

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