News & Analysis as of

Patent Litigation Evidence Inter Partes Review (IPR) Proceeding

DLA Piper

USPTO Director’s Decision Highlights Consequences of Evidence Suppression

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In a rare exercise of authority through a sua sponte director review, US Patent and Trademark Office (USPTO) Director Kathi Vidal affirmed the Patent Trial and Appeal Board (PTAB)’s decision to sanction patent owner Longhorn...more

Jones Day

Secondary Considerations Arguments Precluded By Prior Nexus Testimony

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On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable. Yita LLC v. MacNeil IP LLC, IPR2023-00172, Paper 70 (PTAB Jun. 6, 2024)...more

McDermott Will & Emery

Is Evidence of All Claimed Elements in Prior Art Enough? Not Without Motivation to Combine

The US Court of Appeals for the Federal Circuit reversed a Patent Trial & Appeal Board obviousness decision, finding that disclosure in the prior art of all recited claim elements across multiple references, without more,...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

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Affirms PTAB’s Ruling of Obviousness for the Colorization of Fabrics

In Jodi A. Schwendimann, fka Jodi A. Dalvey, v. Neenah, Inc., Avery Products Corporation, No. 2022-1333, 2022-1334, 2022-1427, 2022-1432 (Fed. Cir. October 6, 2023) (“Opinion”), the case addresses whether there was...more

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

[Webinar] Developments in IPR Estoppel - December 5th, 1:00 pm - 2:00 pm EST

Director Jason A. Fitzsimmons and Counsel Richard A. Crudo will present the “Developments in IPR Estoppel” webinar on Tuesday, December 5, 2023, at 1:00 PM ET. The possibility of being estopped from asserting prior art in...more

Knobbe Martens

Low-Bar for Corroboration

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MEDTRONIC, INC. v. TELEFLEX INNOVATIONS S.A.R.L. Before Moore, Lourie, and Dyk. Appeal from the Patent Trial and Appeal Board - Summary: Federal Circuit confirms low bar for evidence corroborating prior inventorship...more

Jones Day

Tactical Decision Leads to Supplemental Information Request Denial

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Parties before the PTAB should be careful to submit supplemental materials as soon as practicable. In Extractiontek Sales v. Gene Pools Tech., the PTAB denied a Patent Owner’s motion to submit a deposition transcript from a...more

McDermott Will & Emery

Little Weight Given to Expert Declaration That Repeats IPR Petition

The US Patent & Trademark Office Director affirmed and designated as precedential a Patent Trial & Appeal Board (Board) decision denying institution of an inter partes review (IPR) petition where the expert declaration...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Google LLC v. IPA Technologies Inc., 34 F.4th 1081...

Google petitioned for IPR of two patents owned by IPA. Each of the asserted grounds relied on the Martin reference. Martin lists as authors the two inventors of the challenged patents and a third person, Dr. Moran. During...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

Library Indexing Insufficient to Establish Public Accessibility

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In Salesforce.com, Inc. v. WSOU Investments, LLC d/b/a Brazos Licensing and Development, the Board denied institution of inter partes review of a patent directed to providing content to a limited display terminal (e.g., a...more

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

PTAB Strategies and Insights Newsletter: May 2022: Split Panel Weighs General Skepticism Differently in Obviousness Inquiry

In a recent opinion by the Federal Circuit, Auris Health, Inc. v Intuitive Surgical Operations, Inc., Case 2021-1732, the panel split on the weight of general industry skepticism in an obviousness analysis and split on...more

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

PTAB Strategies and Insights Newsletter: May 2022

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

Akin Gump Strauss Hauer & Feld LLP

Inventor Declaration Excluded by PTAB Because Examination in Foreign Proceeding No Substitute for Cross-Examination by IPR Counsel

In two related inter partes review proceedings, the Patent Trial and Appeal Board granted a petitioner’s motion to exclude the declaration of an inventor because the patent owner failed to make him available for...more

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

[Webinar] The Interplay Between District Court and PTAB: Estoppels, Evidentiary, Recovery - April 5th, 1:00 pm - 2:00 pm EDT

In conjunction with the release of the firm's year-in-review report, our speakers will discuss the recent cases surrounding IPR estoppels, evidentiary issues, and recovery, which notably highlight the interplay between the...more

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

2021 PTAB Year in Review: Analysis & Trends: Evidentiary Issues When Leveraging the Records in Parallel Proceedings Involving the...

Parallel proceedings before the USPTO Patent Trial and Appeal Board (PTAB) are a common feature of district court litigation, and it is common for the factual records to overlap between these tribunals. As a result, questions...more

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

2021 PTAB Year in Review: Analysis & Trends: Developments in Antedating Asserted Art at the PTAB

USPTO Patent Trial and Appeal Board (PTAB) decisions in 2021 show that antedating a prior-art reference remains a viable option to knock out a ground in an inter partes review (IPR) petition—patent owners were successful in...more

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

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

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 patent litigation. In its first...more

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

2021 PTAB Year in Review: Analysis & Trends

[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

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Raytheon Technologies Corp. v. General Electric...

General Electric Co. (GE) petitioned for inter partes review (IPR) of claims 3 and 16 of Raytheon Technologies Corp.’s U.S. Patent No. 9,695,751 related to gas turbine engines. The U.S. Patent Trial and Appeal Board (Board)...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

Jones Day

Discovery Request Seeking Deposition Preparation Materials Denied

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The Patent Trial and Appeal Board (“PTAB”) recently denied a Motion for Additional Discovery because the movant could not prove beyond mere speculation that the requested documents would be useful to show witness scripting....more

Goodwin

Issue 36: PTAB Trial Tracker

Goodwin on

FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW - In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. Cir. Oct. 7, 2021), the Federal Circuit considered...more

Akin Gump Strauss Hauer & Feld LLP

Unavailability of Witness for Cross-Examination Dooms Reliance on Affidavit Testimony in PTAB Proceeding

In a series of related inter partes review proceedings, the Patent Trial and Appeal Board recently granted a petitioner’s motion to strike the sworn affidavit of a witness who was unwilling to submit to cross-examination. In...more

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