News & Analysis as of

Prior Art Burden of Proof Patent Ownership

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

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

Snell & Wilmer

Federal Circuit Holds Patent Owners Bear IPR Estoppel Burden of Proof

Snell & Wilmer on

The Federal Circuit recently held, for the first time, that patent owners bear the burden of proof for an Inter Partes Review (“IPR”) Estoppel affirmative defense that an alleged infringer failed to include prior art in a...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Addresses Burden of Proof for IPR Estoppel

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

Akin Gump Strauss Hauer & Feld LLP

Withdrawal of Petitioner from IPR Proceeding All But Ensures Success in Contingent Motion to Amend

On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

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

Jones Day

PTAB Requires Identification of Structure for Function for Means-Plus-Function Terms

Jones Day on

In a decision dated August 17, 2017, the Board denied institution of Kingston Technology Company, Inc.’s petition requesting inter partes review of claims 1-3, 6-8, 11-15, 23-28, and 36-39 of U.S. Patent No. 6,088,802 (“the...more

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