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Inter Partes Review (IPR) Proceeding United States Patent and Trademark Office Time-Barred Claims

Fish & Richardson

Recapping a Busy Summer for Director Review

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United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Clarifies Test for Exception to Increasingly Rare Interference Proceedings

Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

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

Jones Day

Down to the Wire: POP Finds Petition Payment Timely

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On January 14, 2022, the PTAB issued a precedential opinion granting a request for rehearing of a denial of an IPR petition that had previously found a petition to be time-barred because the wire transfer had not been timely...more

Haug Partners LLP

2020 Year in Review: Noteworthy Patent Precedent in an Unprecedented Year

Haug Partners LLP on

The year 2020 brought significant change to many sectors of life, and patent law was no exception. Throughout the year, the U.S. Supreme Court and the Federal Circuit handed down several notable decisions that have and will...more

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

PTAB Strategies and Insights - December 2020: U.S. Patent and Trademark Office Patent Trial and Appeal Board Announced Three New...

The U.S. Patent and Trademark Office Patent Trial and Appeal Board has elevated three panel decisions to precedential this month. RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020)...more

Haug Partners LLP

Facebook v. Windy City - Federal Circuit Justifies Judicial Review of PTAB Joinder Decisions at the Institution Stage

Haug Partners LLP on

WHAT DO WE KNOW? 1. On September 4, 2020, the Federal Circuit modified and reissued its March 18, 2020 Facebook v. Windy City opinion to address the Supreme Court’s intervening April 20, 2020 Thryv v. Click-to-Call opinion...more

Morgan Lewis

Supreme Court PTAB Assessment of One-Year Inter Partes Review Time Bar Is Non-Reviewable

Morgan Lewis on

With this decision, the US Supreme Court again prioritizes giving the US Patent and Trademark Office (PTO) a second chance to review and potentially weed out “bad patents,” over permitting parties the opportunity to challenge...more

McDermott Will & Emery

Special Report - 2019 IP Law Year in Review - Patents

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2019 was another milestone year in intellectual property law that resulted in hundreds of decisions by the courts and Patent Trial and Appeal Board (PTAB) that will affect your company’s litigation, patent prosecution or...more

Faegre Drinker Biddle & Reath LLP

Following Up after Oral Argument in Thryv, Inc. fka Dex Media Inc. v. Click-to-Call Technologies, LP

On June 24, 2019, the Supreme Court granted the petition for certiorari in Thryv, Inc. fka Dex Media Inc. v. Click-to-Call Technologies, LP on the question of whether 35 U.S.C. § 314(d) permits appeal of the Patent Trial and...more

White & Case LLP

Can Late IPR Petitions Be Appealed? Analyzing the Supreme Court's Oral Argument in Thryv, Inc. v. Click-to-Call Technologies

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White & Case Technology Newsflash - On December 9, 2019, the Supreme Court heard oral arguments in Thryv, Inc. v. Click-to-Call Technologies, Case No. 18-916. The case involves the proper application of Section 315(b) of the...more

McDermott Will & Emery

IPR Time-Bar Clock Starts Ticking on Service of Complaint, Even if Deficient

McDermott Will & Emery on

In a precedential decision, the Patent Trial and Appeal Board (PTAB) dismissed a petition for inter partes review (IPR), finding that the one-year time limit for filing an IPR petition under 35 USC § 315(b) is triggered even...more

McDermott Will & Emery

Late Identification of Real-Party-in-Interest Permitted Even Where It Would Otherwise Create Time-Bar

McDermott Will & Emery on

Addressing whether the Patent Trial and Appeal Board (PTAB) is permitted to excuse an inter partes review (IPR) petitioner’s late identification of additional real-parties-in-interest (RPIs), the US Court of Appeals for the...more

Knobbe Martens

Federal Circuit Review - June 2019

Knobbe Martens on

One-year Clock for Filing IPR Petition Applies to Litigants and Parties that Become Privies of the Litigant Prior to Institution. In Power Integrations, Inc v. Semiconductor Components, Appeal No. 2018-1607, the Federal...more

Miller Canfield

Supreme Court Remains Focused on Intellectual Property, Adds Two Trademark Cases For Next Term

Miller Canfield on

The Supreme Court granted certiorari in two trademark cases on June 28, 2019, adding them to its docket for next term. Romag Fasteners, Inc. v. Fossil, Inc., et al. concerns whether, under Section 35 of the Lanham Act, 15...more

Nutter McClennen & Fish LLP

5 Patent Law Petitions to Watch at the Supreme Court

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Wi-Fi One v. Broadcom, 878 F.3D 1364 (FED....

Broadcom sought inter partes review of three patents owned by Wi-Fi One. In response to Broadcom’s petitions, Wi-Fi One argued that the IPR was barred under 35 U.S.C. § 315(b) because Broadcom was in privity with certain...more

Jones Day

Precedential Opinion Panel to Review Same-Party Joinder

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In September, the Patent Office revised Standing Operating Procedure 2 to create a new review path for designating opinions precedential or informational. Under the new rule, the review is performed by the Precedential...more

Foley & Lardner LLP

One-Year Time Bar for IPR Filing Triggered Even When Served Complaint Is Voluntarily Dismissed

Foley & Lardner LLP on

In August, the Federal Circuit addressed the 35 U.S.C. § 315(b) one-year time bar to IPR institution in Click-to-Call Technologies, LP v. Ingenio, Inc. In an en banc footnote, the court held that an IPR cannot be instituted...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - October 2018

Gust, Inc. v. AlphaCap Ventures, LLC, Appeal No. 2017-2414 (Fed. Cir. Sept. 28, 2018) In an appeal from a district court decision awarding fees pursuant to 28 U.S.C. § 1927, the Federal Circuit reversed. The decision makes...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2016-2099, -2100, -2101, -2332, -2333, -2334 (Fed. Cir. May 7, 2018) - In an appeal from an inter partes review, the Federal Circuit...more

Jones Day

Court Grants Rehearing In Light Of Wi-Fi One

Jones Day on

Eleven days after the Federal Circuit’s en banc opinion in Wi-Fi Onc, LLC v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), a three-judge panel granted a petition by patent owner Click-to-Call...more

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

PTAB Strategies and Insights - January 2018

The PTAB Strategies and Insights 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...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

The Supreme Court is taking another patent case, granting certiorari in WesternGeco v. Ion. A divided panel of the Circuit had ruled that the plaintiff was not entitled to lost profits as a result of the sale of components of...more

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