News & Analysis as of

Patent Infringement Patents Joinder

Akin Gump Strauss Hauer & Feld LLP

Termination of IPR Proceeding on the Eve of Final Written Decision Dooms Joinder Attempt

The Patent Trial and Appeal Board has denied institution and joinder of an inter partes review petition after determining that the petition was not only time-barred but that joinder was also foreclosed. In making its...more

Erise IP

Eye on IPRs, March 2024: PTAB’s Claim Construction of Cooling Patent is Hot Issue, SCOTUS Won’t Hear IPR Joinder Challenge

Erise IP on

Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: Cooling Patent Restored by Federal Circuit Over PTAB’s Claim Construction - ...more

Venable LLP

EYLEA® (aflibercept) and Soliris® (eculizumab) IPR Updates

Venable LLP on

On December 8, 2023, the PTAB instituted three of Samsung Bioepis’s pending IPRs against Alexion’s Soliris® (eculizumab), IPR2023-00933, IPR2023-00998, and IPR2023-00999. The challenged patents include composition of matter,...more

Jones Day

PTAB Applies General Plastic Factors to Serial Petitions Seeking Joinder

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In February 2023, T-Mobile USA, Inc. (“T-Mobile”) filed petitions requesting four inter partes reviews (“the T-Mobile IPRs”)—two of which challenged U.S. Patent No. 8,630,234 and two of which challenged U.S. Patent No....more

WilmerHale

Federal Circuit Patent Watch: Federal Circuit Affirms Decision to Impose Discovery Sanctions Against Defendant for Late Disclosure...

WilmerHale on

Precedential Federal Circuit Opinions - 1.  ADASA INC. v. AVERY DENNISON CORPORATION [OPINION] (2022-1092, 12/16/2022) (Moore, Hughes, and Stark) - Moore, C.J. The Court affirmed in part, vacated in part, and remanded...more

Jones Day

PTAB Denies Joinder Motion Filed More One Month After PGR Institution

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Typically, a Motion for Joinder to an earlier post-grant review (“PGR”) must be filed within one month of the institution of the earlier PGR. 37 C.F.R. § 42.222(b).While the Patent Trial and Appeal Board (“PTAB”) does have...more

Jones Day

Joinder Denied For Petitioner Whose Invalidity Case Was Dismissed With Prejudice

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In the PTAB’s recent decision in Code 200 v. Bright Data Ltd., IPR2021-01503, Paper No. 13 (PTAB Mar. 14, 2022), the PTAB expounded upon the circumstances in which joinder of a “me-too” case under § 315(b) was not...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Network-1 Tech., Inc. v. Hewlett-Packard Co. et....

Network-1 sued HP, among others, for patent infringement. Another defendant then filed an inter partes review (IPR) petition. Following institution, HP filed its own petition on different grounds and a motion to join the...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

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

PTAB Strategies and Insights - December 2020

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

Jones Day

PTAB Designates RPI, Follow-On Petition Cases Precedential

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On December 4th, the PTAB designated the following three cases precedential: RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) - This decision on remand from the...more

Miller Canfield

IP Litigation Quarterly Update: Q3 2020

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In a relatively quiet third quarter of 2020, the Federal Circuit decided issues on joinder, estoppel, claim preclusion, and importantly, upheld the Patent Trial and Appeal Board process finding that cancellation of patent...more

Haug Partners LLP

Threshold Issues, Misdirected Lawyering, and a Frustrated Federal Circuit

Haug Partners LLP on

The Federal Circuit, in an opinion by Judge O’Malley, did not hold back in expressing its displeasure in being asked to resolve a claim construction dispute in AntennaSys, Inc., v. AQYR Technologies, Inc. and Windmill...more

Troutman Pepper

Federal Circuit Review - Issue 278

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278-1. Federal Circuit Remands Patent Infringement Case to Answer Patent Ownership and License to Practice Questions - The Federal Circuit recently vacated a grant of summary judgment of non-infringement of a patent,...more

Knobbe Martens

The Mere Presence of Patent Issues in a Contract Dispute Does Not Create Federal Jurisdiction

Knobbe Martens on

ANTENNASYS, INC. v. AQYR TECHNOLOGIES, INC. Before, O’Malley, Bryson, and Reyna. Appeal from the U.S. District Court for the District of New Hampshire - Summary: The Federal Circuit held that claim construction issues...more

McDermott Will & Emery

Full of Hot Air? PTAB Joinder Decisions Under § 315(c) Are Appealable

McDermott Will & Emery on

Addressing whether it has jurisdiction to review joinder decisions made by the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit reissued a prior decision explaining that a joinder decision...more

Knobbe Martens

Federal Circuit Has Jurisdiction to Review Joinder Decisions in IPRs

Knobbe Martens on

FACEBOOK, INC., V. WINDY CITY INNOVATIONS LLC Before Prost, Plager, and O’Malley.  Appeal from the Patent Trial and Appeal Board. Summary:  The Federal Circuit has jurisdiction to review challenges to the Board's joinder...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (August 31-September 4): Same-Party Joinder Still Not Thryv-ing

Last week was September Court week, marking the unofficial end of summer for Federal Circuit practitioners. The Court issued a total of 25 decisions, including 8 Rule 36 summary affirmances in cases argued last week, as well...more

Proskauer - Minding Your Business

Federal Circuit Issues a Splintered Ruling on the Eleventh Amendment Immunity and Rule 19 Joinder Analysis

On July 24, 2020, a panel of the Court of Appeals for the Federal Circuit issued splintered precedential opinions surrounding the interplay of state sovereign immunity under the Eleventh Amendment and required joinder of...more

Troutman Pepper

Federal Circuit Review - Issue 273

Troutman Pepper on

273-1 Federal Circuit Holds University of Texas is Immune from Involuntary Joiner, Holds Case against Potential Infringer may Proceed in School’s Absence - The Federal Circuit recently affirmed-in-part, reversed-in-part,...more

Mintz - Intellectual Property Viewpoints

Fractured Federal Circuit Panel Finds That Sovereign Immunity Does Not Prevent Exclusive Licensee from Pursuing Unlicensed...

Entities with patent-related relationships with state universities scored a victory under the rarely implicated (at least for patent practitioners) doctrine of sovereign immunity. For patent holders, sovereign immunity comes...more

McDonnell Boehnen Hulbert & Berghoff LLP

Gensetix, Inc. v. Board of Regents of the University of Texas System (Fed. Cir. 2020)

In a conundrum worthy of a law school civil procedure examination, plaintiff Gensetix found itself apparently with no remedy for infringement by Baylor College of Medicine, Diakonos Research Ltd., and William Decker of...more

Sunstein LLP

Court’s Strict Interpretation of Timing Requirement May Force Patent Validity Challenges in Two Forums

Sunstein LLP on

The America Invents Act (“AIA”), signed into law in 2011, introduced inter partes review (“IPR”), which allows parties to challenge the validity of patent claims in proceedings before the Patent Trial and Appeal Board...more

Fish & Richardson

Federal Circuit Says PTAB Joinder Rules Contrary to Law

Fish & Richardson on

The Federal Circuit has ruled in Facebook, Inc. v. Windy City Innovations, LLC that the Patent Trial and Appeal Board’s (PTAB) practice of permitting petitioners to join themselves as parties to existing reviews and adding...more

McDonnell Boehnen Hulbert & Berghoff LLP

Facebook, Inc. v. Windy City Innovations, LLC (Fed. Cir. 2020)

It's often said that hard cases make bad law.  And that is what had happened here:  faced with an unreasonable number of potentially asserted claims in litigation, and a Plaintiff not required to identify which of those...more

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