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  • Federal Circuit Affirms Public Availability Of Foreign Publication
     
    11/12/2019

    On November 7, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming a Patent Trial and Appeal Board (“PTAB”) decision finding invalidity on obviousness grounds.  Telefonaktiebolaget LM Ericsson v. TCL Corp. et al., __ F.3d __ (Fed. Cir. Nov. 7, 2019).  The CAFC ruled that the PTAB did not abuse its discretion in admitting late-submitted evidence regarding the public availability of a foreign publication and in finding that the foreign publication was available as prior art.
    CATEGORIES: IPRsPrior ArtPTAB
  • PTAB Denies Customer’s “Follow-On” IPR Petition Based On Supplier’s Prior Petition 
     
    10/17/2019

    On October 3, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office issued a Decision Denying Institution of Inter Partes Review (IPR) under 35 U.S.C. § 314(a).  PayPal, Inc. v. IOENGINE LLC, IPR Case No. IPR2019-00884, Paper 22 (PTAB Oct. 3, 2019).  The PTAB exercised its statutorily-authorized discretion to deny institution based primarily on a customer-supplier relationship between the instant petitioner and a prior petitioner.
     
  • PTAB Designates Precedential Two Opinions Regarding IPR Time Bar And Pre-Institution Disclaimer
     
    09/17/2019

    On September 9, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated two decisions as precedential.  Infiltrator Water Technologies, LLC v. Presby Patent Trust, IPR Case No. IPR2018-000224, Paper 18 (PTAB Oct. 1, 2018) (designated: Sept. 9, 2019); General Electric Company v. United Technologies Corporation, IPR Case No. IPR2017-00491, Paper 9 (PTAB July 6, 2017) (designated: Sept. 9, 2019).  In Infiltrator Water, the PTAB held that a dismissal of a complaint without prejudice for lack of personal jurisdiction does not reset the one-year time bar for a petitioner to file a petition for inter partes review.  In General Electric, the PTAB denied institution where the patent owner disclaimed the challenged claims.
  • PTAB Designates As Precedential Decision Barring IPR Filed More Than One Year After Patent Challenger Filed District Court Action That Was Dismissed Without Prejudice
     
    09/10/2019

    On August 29, 2019, the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“PTAB”) designated as precedential a January 31, 2019 decision in Cisco Systems, Inc. v. Chrimar Systems, Inc., Case IPR2018-01511 (PTAB Jan. 31, 2019) (Paper 11).  The PTAB found that 35 U.S.C. § 315(a) bars a patent challenger from challenging a patent at the PTAB more than one year after filing a declaratory judgement (“DJ”) action in district court challenging the same patent, even if the patent challenger voluntarily withdrew the DJ action without prejudice.
    CATEGORIES: IPRsPTAB
  • Federal Circuit Dismisses Appeals Challenging PTAB’s Decision To Terminate IPRs On Remand
     
    09/04/2019

    On August 29, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing three related appeals, each challenging the decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) to terminate an inter partes review (IPR). Biodelivery Scis. Int’l v. Aquestive Therapeutics, Inc.__ F.3d __ (Fed. Cir. Aug. 29, 2019).  The CAFC found that 35 U.S.C. § 314(d) bars it from reviewing the PTAB’s decision, even though the PTAB had previously issued a final written decision of patentability in each IPR.
  • PTAB Designates Precedential Two Additional Opinions Regarding Discretionary Denials Of IPR Institution Under Sections 314(a) And 325(d)
     
    08/13/2019

    On August 2, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential two Decisions on Institution.  Valve Corp. v. Elecs. Scripts Prods. Inc., IPR Case Nos. IPR2019-00064, -00065, -00085, Paper 10 (PTAB May 1, 2019) (designated: Aug. 2, 2019); Becton, Dickinson & Co. v. B Braun Melsungen AG, Case No. IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (designated: Aug. 2, 2019).  In Valve, the PTAB held that General Plastic factor 1—concerning discretionary denials under 35 U.S.C. § 314(a) for “follow-on” petitions—applied to a joined petitioner.  In Becton, Dickinson, the PTAB delineated a list of factors to consider when determining whether to exercise its discretion to deny a petition under 35 U.S.C. § 325(d) where “the same or substantially the same prior art or arguments previously were presented to the Board.”
  • Federal Circuit Finds That Direct Competitor Lacks Standing To Appeal Unfavorable IPR Decision
     
    07/23/2019

    On July 10, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing for lack of standing an appeal of a Patent Trial and Appeal Board (PTAB) inter partes review (IPR) decision finding certain patent claims not unpatentable.  General Electric Co. v. United Technologies Corp., —F.3d—, (Fed. Cir. July 10, 2019).  The CAFC ruled that the patent challenger lacked standing to appeal the adverse decision even though, among other things, it is a direct competitor of the patent owner.
    CATEGORIES: IPRsPTAB
  • Supreme Court Will Consider Appealability Of The PTAB’s Section 315(b) One-Year Bar Rulings
     
    07/02/2019

    On June 24, 2019, the United States Supreme Court granted certiorari to review whether a decision by the Patent Trial and Appeal Board (PTAB) to institute an inter partes review (IPR) is an appealable decision.
  • Federal Circuit Rules That State Sovereign Immunity Does Not Bar IPRs
     
    06/18/2019

    On June 14, 2019, the Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming Patent Trial and Appeal Board (“PTAB”) decisions declining to dismiss petitions for inter partes review (IPR).  Regents of the Univ. of Minn. v. LSI Corp. et al., —F.3d—, (Fed. Cir. June 14, 2019).  The CAFC ruled that the doctrine of sovereign immunity does not bar IPR of state-owned patents.
    CATEGORIES: IPRsPTAB
  • Applying The Doctrine Of Issue Preclusion, Federal Circuit Affirms PTAB Unpatentability Finding
     
    06/04/2019

    On May 23rd, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming the Patent Trial and Appeal Board’s inter partes review (IPR) unpatentability decision.  Papst Licensing GmbH v. Samsung Elec. Am. Inc., __ F.3d __(Fed. Cir. May 23, 2019).  The CAFC ruled that claim-construction and prior-art rulings in an earlier IPR created issue preclusion barring the patent owner from contesting those issues in the appeal of a later IPR.
  • Federal Circuit Finds Competitor Lacks Article III Standing To Appeal Adverse IPR Decision
     
    05/23/2019

    On May 13, 2019, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion on an appeal from a Final Written Decision in an inter partes review (IPR) proceeding before the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office.  AVX Corp. v. Presidio Components, Inc., __ F.3d__ (Fed. Cir. May 13, 2019).  The CAFC held that the appellant, AVX, lacked standing to appeal the decision and therefore dismissed the appeal.
    CATEGORIES: Article III StandingIPRs
  • PTAB Goes “Deeper,” Offering Further Guidance On Its Post-SAS Practice
     
    04/16/2019

    On April 5, 2019, the Patent Trial and Appeal Board (“PTAB”) at the United States Patent and Trademark Office designated as “Informative” two prior decisions relating to the PTAB’s discretion about whether to institute inter partes review (“IPR”) proceedings for trial.  In each, the PTAB exercised its discretion to deny institution of an IPR proceeding, even though the Petitioner demonstrated a reasonable likelihood of prevailing on some claims.
    CATEGORIES: Inter-partes reviewIPRsPTAB
  • PTAB Designates Precedential Opinion Allowing Section 101 Consideration Of Proposed Amended Claims
     
    03/26/2019

    On March 18, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential a Decision on Patent Owner’s Request for Rehearing.  Amazon.com, Inc. v. Uniloc Luxembourg S.A., IPR Case No. IPR2017-00948 (PTAB Jan. 18, 2019).  The PTAB held that, while a Petitioner may only challenge patent claims in an inter partes review based on prior art patents and publications under 35 U.S.C. §§ 102 and 103, it is nonetheless proper to consider patent eligibility under 35 U.S.C. § 101 for any proposed substitute claims.
  • United States District Court For The Eastern District Of New York Finds Patent Defendant Estopped From Asserting Invalidity Grounds That Defendant Did Not Include In Its Petition For Inter Partes Review
     
    02/12/2019

    On Wednesday, January 30, 2019, Judge Kiyo A. Matsumoto of the United States District Court for the Eastern District of New York denied the request of defendant Presidio Components, Inc., (the “Company”) to supplement its invalidity contentions.  American Technical Ceramics Corp. et al. v. Presidio Components, Inc., Case No. 14-cv-6544 (E.D.N.Y. Jan. 30, 2019).  Judge Matsumoto determined that the Company was statutorily estopped from raising invalidity grounds that it did not include in its petition for inter partes review (“IPR”) to the U.S. Patent and Trademark Office (“USPTO”), and, thus barred the Company from supplementing its invalidity contentions in the subsequent district court proceeding. 
    CATEGORIES: Inter-partes reviewIPRsPTAB
  • Federal Circuit Affirms PTAB Finding That Assignor Estoppel Does Not Apply To IPRs
     
    11/20/2018

    On Friday, November 9, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming in part a final written decision by the Patent Trial and Appeal Board (PTAB).   Arista Networks, Inc. v. Cisco Sys., Inc., —F.3d— (Fed. Cir. Nov. 9, 2018).  The CAFC ruled that the PTAB had correctly decided that the equitable doctrine of assignor estoppel does not apply in inter partes review (“IPR”) proceedings.
  • Federal Circuit Affirms PTAB Finding That Article Is Not A “Printed Publication”
     
    11/13/2018

    On November 6, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion affirming a final written decision by the Patent Trial and Appeal Board (PTAB) finding the patent claims that had been challenged by inter partes review (IPR) to be not unpatentable.   Acceleration Bay, LLC v. Activision Blizzard Inc., —F.3d—, (Fed. Cir. November 6, 2018).  The CAFC ruled that the patent challenger had not proved that an article available on the Internet before the critical date was a “printed publication,” and that the article therefore was not available as prior art.
  • Patent Trial And Appeal Board Relies On References Not Available As IPR Prior Art In Unpatentability Decision
     

    10/31/2018


    On October 23, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office issued a final written decision in an inter partes review (IPR) challenging United States Patent No. 9,073,641.  C&D Zodiac, Inc. v. B/E Aerospace, Inc., Case IPR2017-01275, paper no. 41 (October 23, 2018).  In that decision, the PTAB relied on evidence of prior-art designs to show unpatentability, even though prior art in IPRs is limited to patents and printed publications.

  • ITC Administrative Law Judge Rules That Staff Participation Can Avoid Estoppel Effect Of Respondent’s Earlier IPR
     
    10/23/2018

    On Tuesday, October 2, 2018, the International Trade Commission (ITC) issued the public version of an initial determination issued by Administrative Law Judge (ALJ) Clark S. Cheney. In re Certain Magnetic Tape Cartridges and Components Thereof, Investigation No. 337-TA-1058,—Fed. Reg.— (October 2, 2018).  The ALJ applied prior art to find asserted patent claims invalid, even though the respondents may have been estopped by statute from relying on that prior art.
    CATEGORIES: IPRsITC
  • Federal Circuit Reverses PTAB Finding Of Patentability
     
    09/25/2018

    On Monday, September 17, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion reversing a final written decision by the Patent Trial and Appeal Board (PTAB) and finding the patent claims that had been challenged by inter partes review (IPR) to be unpatentable for obviousness.  E.I. du Pont de Nemours & Co. v. Synvina C.V., —F.3d—, (Fed. Cir. September 17, 2018).  The CAFC first ruled that the patent challenger had standing to appeal, and then on the merits determined that the PTAB had applied the wrong legal standard for obviousness, and therefore reversed.
  • Federal Circuit Denies Mandamus Petition Regarding IPR Institution Decision
     
    08/21/2018

    On Thursday, August 16, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion denying a patent challenger’s petition for a writ of mandamus in connection with the Patent Trial and Appeal Board’s decision not to institute requested inter partes reviews (IPR).  In re. Power Integrations, Inc., —F.3d—, (Fed. Cir. August 16, 2018).  The CAFC ruled that the mandamus petition was tantamount to an appeal of the non-institution decision, which is foreclosed by statute.
  • En Banc Federal Circuit Holds That Dismissal Without Prejudice Of District Court Action Does Not Reset IPR Time-Bar Clock
     
    08/21/2018

    On Thursday, August 16, 2018, the Court of Appeals for the Federal Circuit (CAFC), sitting en banc, issued an opinion reversing the Patent and Trial Board’s determination that a dismissal without prejudice of a district-court complaint resets the statutory clock for filing inter partes reviews (IPR), and vacating the Patent and Trial Board’s final written decision.  Oracle Corp. v. Click-to-Call Techs. LP, —F.3d—, (Fed. Cir. August 16, 2018).  The CAFC held that service of an infringement complaint triggers the one-year bar regardless of whether that complaint is later dismissed without prejudice.
  • Federal Circuit Dismisses IPR Appeal For Lack Of Standing
     
    08/14/2018

    On Friday, August 3, 2018, the Court of Appeals for the Federal Circuit (CAFC) issued an opinion dismissing the patent challenger’s appeal in an inter partes review (IPR) proceeding. JTEKT Corp. v. GKN Automotive Ltd., —F.3d—, (Fed. Cir. August 3, 2018).  The CAFC determined that the unsuccessful patent challenger lacked standing to pursue the appeal and so dismissed it, leaving the unsuccessful patent challenger subject to the estoppel attached to an unsuccessful IPR under the America Invents Act, without any review by an Article III court.
  • Federal Circuit Considers Whether RPX Client Is A Real Party-In-Interest To RPX IPRs
     
    07/31/2018

    On July 24, 2018, the Court of Appeals for the Federal Circuit (“CAFC”) unsealed an opinion vacating a final written decision in two inter partes reviews (“IPRs”).  Applications in Internet Time, LLC v. RPX Corp., —F.3d— (Fed. Cir. July 9, 2018).  The CAFC remanded the IPRs to the Patent Trial and Appeal Board (“PTAB”) for further consideration of whether an RPX client was a real party-in-interest (“RPI”) to the IPRs, in which RPX had claimed to be the sole RPI.
    CATEGORIES: IPRsPTAB
  • Federal Circuit Rejects Indian Tribe’s “Sovereign Immunity” Argument Regarding A Validity Challenge To A Patent It Acquired From Allergan, Inc.
     
    07/24/2018

    In Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., the Federal Circuit held that tribal sovereign immunity cannot be asserted in inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“Board”).
    CATEGORIES: IPRsPTAB
  • Federal Circuit Expands The Supreme Court’s SAS Holding To Require Institution On All Grounds Argued In An IPR Petition
     
    07/10/2018

    On July 2, 2018, a motions panel of the Court of Appeals for the Federal Circuit (CAFC) issued an order remanding an inter partes review (IPR) to the Patent Trial and Appeal Board (PTAB). Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180 and 2018-1181. The CAFC noted that the final written decision that was the subject of the appeal had addressed only one of the two sets of grounds of unpatentability that had been asserted in the petition for inter partes review, and directed the PTAB to issue a new decision addressing both grounds.
  • Patent Trial And Appeal Board Designates As Precedential Opinion Instructing On Claim Amendments.
    06/13/2018

    On June 1, 2018, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office designated as precedential an opinion in which it issued instructions concerning patent claim amendments in inter partes review (“IPR”) proceedings.  Western Digital v. SPEX Techs., Case No. IPR2018-00082, paper no. 13 (April 25, 2018).  The PTAB also made a specific note of the duty of candor applicable to both patent owners and petitioners.

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  • US Supreme Court Approves IPRS, But Requires Decision On All Challenged Claims
     
    05/01/2018

    On April 25, 2018, the United States Supreme Court ruled on two cases concerning inter partes review (“IPR”) proceedings:  Oil States Energy Svcs. v. Green’s Energy Grp., case no. 16-712, and SAS Inst. Inc. v. Iancu, case no. 16-969.  In the first case, the Court ruled that IPRs can be a Constitutionally permissible way for the Patent Office to revoke already-issued patents, and in the second case, the Court ruled that the Patent Office is required to rule on either all or none of the patent claims challenged in a request for IPR.

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  • Patent Trial And Appeal Board Awaits Ruling From Bankruptcy Court On Automatic-Stay Provision
     
    02/06/2018

    On February 1, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office, faced with a motion to stay proceedings pending resolution of the patent owner’s bankruptcy filing, entered an order requiring further briefing and requiring the parties to report on the bankruptcy court’s view of whether the automatic-stay bankruptcy statute applies to inter partes review (IPR) proceedings.  Twitter, Inc. v. Youtoo Techs., LLC, case no. IPR2017-00829, paper no. 27. 

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  • Patent Trial And Appeal Board Denies Discovery On Real-Party-In-Interest Issue
     
    02/06/2018

    On February 2, 2018, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office denied a patent owner’s motion for discovery concerning a petitioner’s identification of the real party in interest in an inter partes review (IPR).  Artesian Home Prods. v. Gutterglove, Inc., No. IPR2018-00015. 

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  • PTAB Denies Joint Motion To Terminate Due To Settlement Sought Just Prior To Final Written Decision Deadline 
     
    12/19/2017

    On December 14, 2017, a panel of Administrative Patent Judges (Judges Scott Daniels, Neil Powell, and Timothy Goodson) of the Patent Trial and Appeal Board (PTAB) for the United States Patent and Trademark Office denied the parties’ joint motion to terminate an inter partes review (IPR) proceeding due to settlement.  Rubicon Commc’ns, LP v. Lego A/S, IPR case no. IPR2016-01187.

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    CATEGORIES: IPRsPTAB
  • PTAB Grants Motion For Modified Protective Order To Prevent Patent Owner’s Expert-Witness/CEO From Accessing Petitioner’s Highly-Confidential Documents
     
    12/19/2017

    On December 13, 2017, a panel of Administrative Patent Judges (Judges Grace Karaffa Obermann, Bart Gerstenblith, and Robert Kinder) of the Patent Trial and Appeal Board (PTAB) for the United States Patent and Trademark Office granted Petitioner Campbell Soup’s motion for a modified protective order in inter partes review (IPR) proceedings brought against patents owned by Gamon Plus.  Campbell Soup Co. v. Gamon Plus, Inc., IPR case nos. IPR2017-00087, IPR2017-00091, IPR2017-00094.

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  • United States Patent Office Adopts Rule On Attorney-Client Privilege
     
    12/05/2017

    The United States Patent and Trademark Office has adopted a new rule, 37 C.F.R. § 42.57, that among other things gives communications with foreign-jurisdiction patent agents the same protection they would be accorded if they were communications with a U.S. attorney.

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    CATEGORIES: IPRsPTAB
  • U.S. Supreme Court Reviews Inter Partes Review In Oil States And SAS Oral Arguments 
     
    12/05/2017

    On November 27, 2017, the U.S. Supreme Court heard oral argument in two cases dealing with the United States Patent and Trademark Office inter partes review (IPR) proceedings that were created in the America Invents Act in 2011.  IPRs have been a frequent topic of discussion in the U.S. intellectual-property community since they began; the general impression is that they are a very useful and very effective way of invalidating issued patents, but there is also concern among patent owners that IPRs may be too effective, invalidating patents that a District Court judge or jury would have upheld.

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