Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast
Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion
“Expert testimony that does not disclose the underlying facts or data on which the opinion is based is entitled to little or no weight.” 37 C.F.R. § 42.65(a). With that principle in mind, the PTAB recently denied institution...more
The PTAB denied institution of inter partes review reasoning that Petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. The...more
Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review. In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent...more
The Board declined to institute inter partes review because Petitioner failed to identify adequate corresponding structure in the challenged patent that performed the function of claim limitation that was to be construed...more
On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more
Director Vidal recently vacated three discretionary denials of institution after finding that the three petitioners did not have a “significant relationship” with a prior petitioner. American Honda Motor Co., Inc. v. Neo...more
2023 was an exciting year for Section 337 litigation at the ITC, particularly in the final quarter of the year. As we ring in the new year, Wolf Greenfield Shareholder Libbie DiMarco examines five of the most noteworthy ITC...more
On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487. IPR2023-00519, Paper 10....more
In an increasingly rare exercise of discretion, the PTAB denied institution of inter partes review under Fintiv in Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Limited, IPR2023-00587. The PTAB reasoned that...more
The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had...more
In a sua sponte review, USPTO Director Kathy Vidal continued her refinement of the PTAB’s “discretionary denial” practice. Specifically, the Director vacated the Board’s decision to deny institution in Volvo Penta of the...more
The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more
In 2021, an organization of patent owners and various patent-holding companies sued the USPTO in the Eastern District of Texas. The patent owners sought to force the USPTO Director to engage in notice-and-comment rulemaking...more
In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv...more
Please join Troutman Pepper’s Intellectual Property and Health Sciences Practice Group for the second season and first installment of our podcast series focused on strategy, trends, and other happenings at the PTAB. In this...more
The Patent Trial and Appeal Board recently granted the institution of an inter partes review in Samsung Electronics Co. v. Staton Techiya, LLC, despite the existence of a parallel proceeding in the US District Court for the...more
The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more
The USPTO has issued interim procedures curbing the PTAB’s discretionary denials over post-grant proceedings associated with parallel ITC proceedings or district court litigation. ...more
On June 22, 2022, the U.S. Patent and Trademark Office issued two documents regarding the Patent Trial and Appeals Board's discretionary denials of post-grant challenges based on parallel litigation: a retrospective study of...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 Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence,...more
The Federal Circuit recently clarified that the scope of IPR estoppel in district courts includes prior art grounds that were raised or reasonably could have been raised in a petition for inter partes review (IPR), reversing...more
Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...more
In November 2020, Google LLC filed two petitions requesting an inter partes review of the claims of Ikorongo Technology LLC (“Ikorongo”) owned U.S. Patent No. 8,874,554 (“the ’554 patent”)....more
Alarm.com filed three petitions for inter partes review (IPR) against Vivint, Inc.’s ’513 patent. The Patent Trial and Appeal Board (Board or PTAB) denied institution of the first two petitions because Alarm.com had failed to...more