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Patent Litigation Patents Dissenting Opinions

Axinn, Veltrop & Harkrider LLP

USITC Commission Series: the Era of the Mini-Opinion Has Begun

At the International Trade Commission (ITC), every decision made by an Administrative Law Judge (ALJ) is subject to review by a panel of up to six Commissioners. In general, the Commission speaks as a unified voice through...more

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

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition): Ironburg Inventions Ltd. v. Valve Corp., 64 F.4th 1274...

Ironburg sued Valve for infringement of Ironburg’s video-game-console controller patent. Valve responded by filing an IPR challenging the claims on various grounds. The Patent Trial & Appeal Board instituted partial review...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Thryv, Inc. v. Click-To-Call Technologies, Inc.,...

In Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), the Supreme Court held that patent owners cannot appeal determinations by the Patent Trial and Appeal Board declining to apply the time bar of 35 U.S.C....more

McDermott Will & Emery

Patent Owner's Disavowal of Appeal from District Court’s Noninfringement Judgement Moots IPR Appeal

McDermott Will & Emery on

Addressing the standard for mootness in inter partes review (IPR) proceedings following a district court noninfringement judgment, the US Court of Appeals for the Federal Circuit held that a petitioner’s IPR appeal was moot...more

Ladas & Parry LLP

Thryv Inc. v. Click-to-call Technologies LP

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The question of whether the United States Court of Appeals for the Federal Circuit Court of Appeals has any right to examine a decision of the Patent Trial and Appeal Board (PTAB) to institute inter partes review or post...more

McDonnell Boehnen Hulbert & Berghoff LLP

Tormasi v. Western Digital Corp. (Fed. Cir. 2020)

Last month, the Federal Circuit affirmed an Order by the U.S. District Court for the Northern District of California, finding that Appellant Walter A. Tormasi lacked the capacity to sue under Federal Rule of Civil Procedure...more

BakerHostetler

Justice Ginsburg’s Dissents – in Patent Law

BakerHostetler on

As the country collectively mourns the passing of Justice Ruth Bader Ginsburg, I am reminded of the inspiring book “I Dissent: Ruth Bader Ginsburg Makes Her Mark” (which I have read to my children many times). While the...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

Morrison & Foerster LLP - Federal Circuitry

Orders of Interest Roundup

At Federal Circuitry blog, we like to check in once in a while on what the Federal Circuit is doing in its orders that don’t get posted on the public website. Those orders often offer nuggets about practice at the Federal...more

McDonnell Boehnen Hulbert & Berghoff LLP

Is It Time for Federal Circuit to Rethink Its Subject Matter Eligibility Jurisprudence? 

The Federal Circuit's inchoate attempts to fashion a consistent, rational application of the Supreme Court's recent subject matter eligibility jurisprudence, while understandably Herculean in view of the difficulties inherent...more

Morrison & Foerster LLP - Federal Circuitry

Agreeing to Disagree, en Banc Style: How Often Do Judges Dissent From Denial of Rehearing En Banc?

As we mentioned in one of our previous posts, the Federal Circuit recently denied a long-pending petition for rehearing en banc in American Axle & Manufacturing v. Neapco Holdings, a Section 101 case.  More than 8 months...more

Dunlap Bennett & Ludwig PLLC

Most Notable Patent Decisions in the First Half of 2020

In the first half of 2020, several notable decisions further shaped the course of patent law, with rulings from the Supreme Court and Federal Circuit impacting PTAB proceedings, as described below...more

McDonnell Boehnen Hulbert & Berghoff LLP

Uniloc 2017 LLC v. Hulu, LLC (Fed. Cir. 2020)

Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims.  The appeal raises issues of finality...more

Haug Partners LLP

Uniloc v. Hulu - Federal Circuit Clash over Scope of PTAB Review of Substitute Claims

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WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more

McDonnell Boehnen Hulbert & Berghoff LLP

Packet Intelligence LLC v. NetScout Systems, Inc. (Fed. Cir. 2020)

Introduction - Packet Intelligence sued NetScout in the Eastern District of Texas, alleging infringement of U.S. Patent Nos. 6,665,725, 6,839,751, and 6,954,789.  The District Court ruled that all three patents were valid...more

McDermott Will & Emery

Too Early to Hang Up on Click-to-Call

McDermott Will & Emery on

In the wake of its six-week-old decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court of the United States has now granted certiorari in an appeal of another case arising from a Federal Circuit appeal...more

Bass, Berry & Sims PLC

Navigating the Appeal Bar in PTAB Cases

Bass, Berry & Sims PLC on

The U.S. Supreme Court recently construed the § 314(d) appeal bar in inter partes reviews (IPRs) as precluding appeals from time-bar determinations per § 315(b). Thryv, Inc. v. Click-to-Call Techs., LP, 140 S. Ct. 1367...more

Sunstein LLP

Or Forever Hold Your Peace: Supreme Court Ruling Will Spur Early Efforts to Sway PTAB as to Timeliness of IPR Petitions

Sunstein LLP on

The Supreme Court of the United States has recently decided that the discretion of the Patent Trial and Appeal Board (“Board” or “PTAB”) to institute an inter partes review (“IPR”), despite challenges to its timeliness,...more

Manatt, Phelps & Phillips, LLP

Supreme Court: Inter Partes Review Time Bar Held Not Appealable

In Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that the Patent Trial and Appeal Board (Board) decision whether an inter partes review (IPR) petition was timely filed could not be appealed. In a...more

Goodwin

Issue Twenty-Six: PTAB Trial Tracker

Goodwin on

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

McDermott Will & Emery

PTAB Time Bar Application in Instituting IPR Proceedings Nonappealable

Addressing the scope of review of the Patent Trial and Appeal Board’s (PTAB’s) application of the one-year time bar of 35 USC § 315(b) in deciding whether to institute an inter partes review (IPR) proceeding, the Supreme...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - April 2020

Despite the current environment of social distancing, the United States Patent and Trademark Office (USPTO) has continued full operations while eliminating face-to-face interactions. For example, Patent Trial and Appeal Board...more

Chambliss, Bahner & Stophel, P.C.

Supreme Court Reaffirms Non-Appealability of Patent Office Decisions to Review Issued Patents

Any person may challenge the validity of a U.S. patent on the basis that previously issued patents or publications render the patent’s claims invalid as being anticipated by the prior art or obvious in view of the prior art,...more

Bradley Arant Boult Cummings LLP

Supreme Court Holds that PTAB Decisions Regarding Timeliness of IPR Petitions are Not Subject to Judicial Review

“I'm willing to admit that I may not always be right, but I am never wrong,” Samuel Goldwyn once said, and the same is true for the Patent Trial and Appeal Board (PTAB) when it comes to determining the timeliness of inter...more

Bass, Berry & Sims PLC

U.S. Supreme Court Finds That IPR Time-Bar Decisions Are Not Appealable

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On April 20, the U.S. Supreme Court issued its decision in Thryv, Inc. v. Click-to-Call Techs., LP, No. 18-916 (S. Ct. Apr. 20, 2020), finding that the PTAB’s decision to deny institution of an IPR under 35 U.S.C. § 315(b) is...more

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