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The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26, 2024). The regulation...more
In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its...more
On April 3, in Ironburg Inventions Ltd. v. Valve Corp., the Federal Circuit articulated a standard for applying inter partes review (IPR) estoppel on grounds a petitioner “reasonably could have raised” under 35 U.S.C. §...more
AVX Corporation, a company that manufactures and sells a variety of electronic components including capacitors, petitioned for inter partes review (IPR) of Presidio Components, Inc.’s patent directed to single-layer ceramic...more
In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more
We recently reported some early observations about possible trends at the PTAB in the wake of the Supreme Court’s decision in SAS Institute Inc. v. Iancu. See Observations: Three Weeks After Supreme Court’s SAS Institute...more
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
On the same day that the Supreme Court upheld the constitutionality of inter partes reviews, it ruled in SAS Institute Inc. v. Iancu that the United States Patent and Trademark Office wrongly implemented regulations allowing...more
This timely and fast-moving webinar provides insight for business leaders and legal counsel on the recently issued Supreme Court decisions in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute...more
On April 24, 2018, the US Supreme Court decided two important cases that directly impact inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB), and patent litigation as a whole. In Oil States Energy...more
The U.S. Supreme Court ruled Tuesday on two closely monitored cases impacting how patents could be challenged. In the more high-profile case, the court upheld the constitutionality of the inter partes review (IPR) process...more
On March 13, 2018, in Nestlé USA, Inc. v. Steuben Foods, Inc., 2017-1193 (Fed. Cir. Mar. 13, 2018), the Federal Circuit confirmed that collateral estoppel may preclude the need to revisit an issue that had already been...more
PTAB Grants-in-Part Motion to Amend Claims, Even Though Federal Circuit Previously Invalidated the Claims - In Semiconductor Components Industries, LLC v. Power Integrations, Inc., IPR2016-01600, Paper 35 (PTAB Feb. 14,...more
In 2012, the American Invents Act created Inter Partes review (“IPR”) and related proceedings that allowed parties to request that the Patent Office institute a trial to determine the patentability of issued claims. Over the...more
Inter Partes Reexamination Estoppel Attaches On Claim-by-Claim Basis for New Requests and Pending Proceedings - In In re Affinity Labs Of Texas, LLC, Appeal Nos. 2016-1092, 2016-1172, the Federal Circuit held that the...more
Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more
Parallel District Court and PTAB Proceedings - In Douglas Dynamics, LLC v. Meyer Prods. LLC, No. 3:14-cv0886-JDP (W.D. Wis. April 18, 2017), the district court for the Western District of Wisconsin drew a clear line...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