News & Analysis as of

Patents Corporate Counsel Inter Partes Review (IPR) Proceeding

Irwin IP LLP

Standing in Limbo: What Platinum Optics v. Viavi Tells Us About IPR Appeals 

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Platinum Optics Tech. Inc. v. Viavi Solutions Inc., 2024 WL 3836107 (Fed. Cir. 2024) - On August 24, 2024, the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an appeal for lack of standing after a...more

Baker Donelson

Patent Cases to Watch for in the Second Half of 2024

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As we move into the second half of the year, we are alerting you to 11 patent cases that you should look out for during the second half of 2024. This judicial mix touches on a range of industries and interests, such as...more

Pillsbury Winthrop Shaw Pittman LLP

Preclusion Confusion: Federal Circuit Decision in ZyXEL Communications v. UNM Rainforest Sparks Uncertainty at the PTAB

In ZyXEL, the petitioner unexpectedly received a second chance to argue against the patentability of the patentee’s substitute claims, even though the U.S. Patent Trial & Appeal Board (PTAB) had already found those claims...more

Morgan Lewis

Federal Circuit Clarifies Scope and Timing of Collateral Estoppel for Claims Under IPR

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In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more

Wolf, Greenfield & Sacks, P.C.

Sued: What In-House Counsel Without Litigation Experience Need to Know - Finding Your Outside Team

2: Finding Your Outside Team - This is the second in a series of articles that explores considerations and suggested actions for in-house counsel who are inexperienced in patent litigation, yet facing such a suit. The first...more

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

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Holds Operating Manuals Disclosed with Confidentiality Restrictions to be Prior Art

On February 8, in Weber, Inc. v. Provisur Technologies, Inc., the Federal Circuit reversed the Patent Trial and Appeal Board (PTAB) and held that Weber’s operating manuals are prior art printed publications despite their...more

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

2023 PTAB Year in Review: Analysis & Trends

This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more

Haug Partners LLP

Federal Circuit Underscores the Importance of Complying With PTAB Procedural Rules in Parus Holdings v. Google

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The Federal Circuit’s recent precedential decision in Parus Holdings v. Google underscores the importance of complying with the PTAB’s procedural rules in an IPR and the potentially serious consequences of not doing so. The...more

McDermott Will & Emery

Console Yourself: Patent Owner Bears IPR Estoppel Burden

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Addressing for the first time the standard and burden of proof for the “reasonably could have raised” requirement for inter partes review (IPR) estoppel to apply, the US Court of Appeals for the Federal Circuit concluded that...more

Goodwin

USPTO Director Issues Precedential Review Decision Regarding Multiple Dependent Claims

Goodwin on

​​​​​​​Director Katherine Vidal of the U.S. Patent and Trademark Office (“USPTO”) issued a precedential review decision with respect to the interpretation of multiple dependent claims, in a case of first impression before the...more

Fitch, Even, Tabin & Flannery LLP

IP Alert: Federal Circuit Holds Priority Documents Lack Direction to Support Claims

On March 6, in Regents of the University of Minnesota v. Gilead Sciences, Inc., the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) invalidating claims of the...more

Rothwell, Figg, Ernst & Manbeck, P.C.

The Federal Circuit Rejects Additional Challenges to USPTO Authority After Arthrex

CyWee Group Ltd. (“CyWee”) has been bouncing between the Federal Circuit and Patent Trial and Appeal Board (“Board”) with its administrative challenges after two inter partes review (“IPR”) proceedings invalidated the claims...more

Cadwalader, Wickersham & Taft LLP

Intellectual Property Law: Looking Forward to 2023

With the continuing advancements of cutting-edge technologies — such as genome editing (CRISPR) and Non-Fungible Tokens (NFTs) — U.S. courts will have a full docket of challenging IP cases throughout 2023. Below are some of...more

Fenwick & West LLP

No More Waco, Texas Hold ‘Em on Patent Litigation Cases

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It isn’t every day that the literal landscape of patent litigation changes radically with the stroke of a pen. Monday, July 25, 2022 was such a day. That’s when Chief Judge Orlando H. Garcia of the U.S. District Court for the...more

McDermott Will & Emery

Clarification or Raising the Bar? PTO Director Issues New Guidance for Discretionary PTAB Denials

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On June 21, 2022, US Patent & Trademark Office (PTO) Director Katherine K. Vidal issued a memorandum addressing interim procedures for discretionary denials in America Invents Act (AIA)-post grant proceedings at the Patent...more

White & Case LLP

Federal Circuit Potentially Widens Door for PTAB to Identify Its Own Unpatentability Grounds for Substitute Claims

White & Case LLP on

On March 24, 2022, the Court of Appeals for the Federal Circuit criticized the Precedential Opinion Panel's application of its standard for when it is (and isn't) appropriate for the Patent Trial and Appeal Board to sua...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

Fitch, Even, Tabin & Flannery LLP

IP Alert: Federal Circuit Nixes Admitted Prior Art as Basis for IPR

On February 1, in Qualcomm Inc. v. Apple Inc., the Federal Circuit held that Apple could not base an inter partes review (IPR) challenge of a Qualcomm patent solely on “applicant admitted prior art” (AAPA) found in the patent...more

Porter Hedges LLP

Significant Current Issues in Patent Litigation: What to Watch in 2022

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Some of the most significant current issues in patent litigation have been percolating for years: patent eligibility, venue, and inter partes review proceedings. In this post, we consider guidance on patent eligibility;...more

Mintz - Intellectual Property Viewpoints

A Business Deal Could Kill Your Right to Challenge a Patent’s Validity

Last week, the Federal Circuit issued a decision holding that parties can contractually bargain away their rights to file petitions for Inter Partes Review (“IPR”) at the Patent Trial and Appeals Board (“the Board”). This...more

McDermott Will & Emery

2022 IP Outlook Report: The Developments Shaping Patent Law

McDermott Will & Emery on

KEY TAKEAWAYS AND OUTLOOK FOR 2022 - Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more

Fitch, Even, Tabin & Flannery LLP

Indefiniteness Does Not Necessarily End PTAB’s Patentability Inquiry

On December 28, in Intel Corp. v. Qualcomm Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) may not decline to consider the patentability of a claim challenged in an inter partes review (IPR)...more

Fitch, Even, Tabin & Flannery LLP

Again, Federal Circuit Holds Apple Lacked Standing to Appeal IPRs It Initiated

On November 10, in Apple Inc. v. Qualcomm Incorporated, for the second time, and in a 2-1 decision by a different panel, the Federal Circuit held that Apple lacked standing to appeal final decisions in inter partes review...more

Orrick, Herrington & Sutcliffe LLP

PTAB Snapshot – A Quarterly Report on Trends and New Precedent at the PTAB – Q3 The Arthrex Decision, Its Impact on Prior IPR...

In this second edition of Orrick’s quarterly series on the PTAB, we summarize the Arthrex decision, walk through the PTO’s post-Arthrex interim procedure for reviewing PTAB decisions, and discuss potential post-Arthrex...more

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