Fallout from the Fintiv Precedential Decision
JONES DAY TALKS®: Appointments of PTAB Judges Ruled Unconstitutional ... What Now?
In 2023, Fintiv—the precedential Order issued in 2020 that established a six-factor framework that the Patent Trial and Appeal Board (PTAB) applies when evaluating whether to exercise its discretion to institute an America...more
Join litigation shareholder Libbie DiMarco as she breaks down the latest developments for mitigating ITC remedial orders with effective litigation strategies ranging from product redesigns (and when to introduce them) to PTAB...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
In DBN Holding, Inc. v. ITC, the Court of Appeals for the Federal Circuit (“CAFC”) upheld a $6.2M civil penalty levied against DBN, an ITC respondent, for violating a remedial consent order, even though the patent upon which...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...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
[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
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
Petitioner (Apple, Inc.) filed a petition to institute inter partes on a patent owned by Koss Corporation (Patent Owner). The PTAB considered six factors from Fintiv to assess whether to exercise authority to deny...more
We have seen that decisions to institute an inter partes review (IPR) when the challenged patent is part of a parallel proceeding have become rare recently in light of the Fintiv factors. Apple Inc. v. Fintiv, Inc.,...more
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
The Patent Trial and Appeal Board (Board) designated as precedential two decisions involving situations where the Board determined whether to institute review, using its discretion and based on whether review would be an...more
In ABS Global, Inc. v Cytonome/ST, LLC, the Federal Circuit dismissed a Petitioner’s appeal from a U.S. Patent Trial and Appeal Board (“PTAB”) final written decision when it determined that a Patent Owner’s voluntary...more
ABS GLOBAL, INC. V. CYTONOME/ST, LLC - Before Prost, Moore, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: A patent owner may moot a petitioner’s appeal of an IPR final written decision of no...more
The rate at which the Patent Trial and Appeal Board (“PTAB” or “Board”) institutes Petitions for Inter Partes Review (“IPR”) has been in steady decline since the introduction of the IPR procedure in 2013, and is expected to...more
The authors propose replacing the PTAB’s current NHK-Fintiv factors with the alternative “Babcock-Train Factors” set forth herein These alternative factors have been crafted in an effort to provide clearer institution...more
The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of any inter partes review (IPR). Such discretionary denial may be based on a variety of considerations, such as the existence of an ongoing...more
In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more
Last week a Federal Circuit panel in Uniloc 2017 LLC v. Hulu, LLC issued an important decision regarding inter partes review (IPR) before the Patent Trial and Appeal Board on two questions concerning contingent motions to...more
The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.” With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness...more
In a rare reversal, the Patent Trial and Appeal Board (“PTAB”) reassessed the Fintiv factors in a decision on a petition for rehearing of a previous decision denying institution of an inter partes review (“IPR”). The PTAB had...more
The PTAB has explained that it has discretion to deny an IPR petition even if the petitioner has shown that it meets the statutory threshold for institution, which requires “that there is a reasonable likelihood that the...more
The status of a parallel district court proceeding may provide a basis for the PTAB to deny institution of an IPR pursuant to § 314(a). NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sep. 12, 2018)...more
Since their inception as part of the AIA, inter partes reviews (IPRs) have been a favorite tool in the arsenal of patent challengers. Their statutorily mandated 18-month schedule oftentimes allows the PTAB to resolve a...more