News & Analysis as of

Patents Prior Art Denial of Institution

Jones Day

Institution Denied For Lack of Sufficient Structure

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The Board declined to institute inter partes review because Petitioner failed to identify adequate corresponding structure in the challenged patent that performed the function of claim limitation that was to be construed...more

Jones Day

Institution Denial Vacated to Reconsider Prior Art Drawing

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On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more

Jones Day

Common Inventorship And Technology Insufficient For 325(d) Denial

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The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies Scope of IPR Estoppel, Reversing Prior Shaw Decision

The Federal Circuit recently clarified that the scope of IPR estoppel in district courts includes prior art grounds that were raised or reasonably could have been raised in a petition for inter partes review (IPR), reversing...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

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (September 27-October 1): IPRs, Ex Parte Reexams, and the APA

Last week the Federal Circuit judges geared up for their October argument session and perhaps enjoyed the beautiful fall weather in Washington. But the Court still found time to issue a dozen decisions in a wide range of...more

Goodwin

Issue 34: PTAB Trial Tracker

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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

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

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] 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...more

Mintz - Intellectual Property Viewpoints

PTAB Continues Streak of IPR Denials

US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In 2020, the institution...more

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

PTAB Strategies and Insights - March 2021

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

District Court Indefiniteness Ruling Leads to Denial

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The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite....more

Jones Day

PRECEDENTIAL: Trial Court Stay Weighs Strongly Against Fintiv Denial

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The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...more

Jones Day

PRECEDENTIAL: Stipulation Roadmap for Fintiv Factor Four

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It has now been more than seven months since the PTAB designated Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), as a precedential decision. Under this precedent, the PTAB applies a six factor,...more

Mintz - Intellectual Property Viewpoints

Tip #6 for Avoiding IPR Institution: Advocate Claim Constructions the Petition Ignored

Arguing against material constructions proffered by an IPR petition is a basic building block of the patent owner’s preliminary response. Obviously, patent owners must investigate and advocate for claim constructions for...more

Mintz - Intellectual Property Viewpoints

Tip #5 for Avoiding IPR Institution: Policing KSR’s motivation requirement for the ‘how’ and ‘why’.

Building on Tip #4, one effective way to avoid institution and not address facts is to point out shortcomings in the petition's application of KSR when asserting motivation to combine for an obviousness analysis. The Patent...more

Mintz - Intellectual Property Viewpoints

Tip #2 for Avoiding IPR Institution: Focus on a few arguments that will affect all challenged claims

If you are a patent owner facing an inter partes review (“IPR”) or other post-grant review at the Patent Trial and Appeal Board (“PTAB”), your best chance of success is to convince the PTAB not to institute a trial. But that...more

Knobbe Martens

Inventor Removed From Patent May Be Restored Due to Claim Construction

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EGENERA, INC. v. CISCO SYSTEMS, INC. Before Prost, Stoll, and Reyna. Appeal from the United States District Court for the District of Massachusetts. Summary: A patentee that successfully petitioned to correct a patent’s...more

Jones Day

Black Box Structure Insufficient for MPF Element

Jones Day on

In Samsung Elecs Co., Ltd., et al. v. Cellect, LLC, IPR2020-00474, Paper 14 (P.T.A.B. Aug. 17, 2020), the PTAB denied institution of U.S. Patent No. 6,982,740 (“the '740 patent”), finding that the specification did not...more

Goodwin

Issue Twenty-Eight: 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

Sunstein LLP

Fresh is Best and Stale Will Fail: The PTAB Explains Its Logic in Refusing to Institute an IPR

Sunstein LLP on

The Patent Act allows anyone to try to initiate an inter partes review (IPR), which is a proceeding before the Patent Trial and Appeal Board (PTAB) challenging one or more claims of a patent. Any such challenge may be based...more

McDermott Will & Emery

PTAB Highlights Two Opinions Regarding Its Power to Decline Institution

McDermott Will & Emery on

Addressing the scope of its discretion under 35 USC § 325(d), the Patent Trial and Appeal Board (PTAB) designated two opinions as precedential or informative. In Adaptics Limited v. Perfect Company, Case No. 2018-01596...more

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

PTAB Strategies and Insights - August 2019. The USPTO Recently Issued Two Precedential and One Informative Decision Regarding...

The USPTO explained the significance of the cases as follows: Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) – (precedential as to section III.C.5, first paragraph...more

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