On January 19, 2021, Petitioner, 10X Genomics, requested via email authorization to file 1) a five page brief addressing the Board’s institution decision in Samsung Electronics Co., Ltd. v. Acorn Semi, LLC, IPR2020-01204,...more
In a recently designated precedential decision, the Patent Trials and Appeals Board (“PTAB”) considered challenges to claims covering autonomous robotic cleaning devices. SharkNinja Operating LLC v. iRobot Corp.,...more
A recent case in the Northern District of Illinois addressed the issue of collateral estoppel in connection with patents that were similar to those previously cancelled by the PTAB: In Think Prods., Inc. v. Acco Brands...more
On August 18, 2020, the USPTO issued guidance regarding the reliance on Applicant Admitted prior art (AAPA). Under 35 U.S.C. § 311(b), IPRs may be instituted only “on the basis of prior art consisting of patents or printed...more
In Linksmart Wireless Tech., LLC v. Caesars Entm’t Corp., Case No. 2:18-cv-00862-MMD-NJK (D. Nev. May 8, 2020) the Court addressed disputed claim terms in U.S. Reissued Patent No. RE46,459 (the “’459 Patent”), Linksmart had...more
6/19/2020
/ Appeals ,
Claim Construction ,
Computer-Related Inventions ,
Doctrine of Prosecution Disclaimer ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Popular
As was previously noted, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more
In Think Prod., Inc. v. ACCO Brands Corp., No. 18-CV-07506, 2019 WL 6609427, at *1 (N.D. Ill. Dec. 5, 2019), the District Court addressed whether the plaintiff patent ower was collaterally estopped from arguing validity in...more
When patent owners appeal PTAB decisions to the Federal Circuit, 67% of subsequent opinions are one-line Federal Circuit Rule 36 (“Rule 36”) summary affirmance orders, but when petitioners appeal, that number is a mere 18%. ...more
On November 21, 2017, Petitioner Infiltrator Water Technologies, LLC, filed a Petition for inter partes review (IPR) of claims 8–12 of U.S. Patent No. 8,815,094 B2. In its Preliminary Response, filed on March 7, 2018, Patent...more
The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination. This...more
The PTAB’s Precedential Opinion Panel (POP) will consider, at the behest of 360Heros, whether a complaint alleging patent infringement made by a party other than the patent owner of the patent triggers the § 315(b) time bar....more
5/20/2019
/ § 315(b) ,
Amicus Briefs ,
Inter Partes Review (IPR) Proceeding ,
Legislative History ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Real Party in Interest ,
Standing ,
Time-Barred Claims
On March 7, 2019, the PTAB issued a new precedential order that helps to clarify a petitioner’s briefing rights in view of a recent update to the AIA Trial Practice Guide....more
Assignor estoppel is a long-established, common-law doctrine of equity, which prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. The doctrine also applies to parties...more
On September 13, 2018, the U.S. Court of Appeals for the Federal Circuit affirmed a decision by the USPTO Patent Trial and Appeal Board (PTAB) that the claims in U.S. Patent 8,714,977 (the ‘977 patent) are unpatentable as...more
A party to an inter partes review may submit supplemental information within one month of institution if the party can show that the supplemental information is “relevant to a claim for which the trial has been instituted.”...more
The Patent Trial and Appeals Board (PTAB) recently denied a Motion to Dismiss asserting the presence of a conflict of interest of USPTO Director Andrei Iancu. In St. Jude Medical, LLC. v. Snyders Heart Valve LLC, the Patent...more
In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, the PTAB provided new guidance to practitioners regarding the eligibility of conference papers as printed publications for use as prior art references...more
3/23/2018
/ Evidence ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Prior Art ,
Professional Conferences ,
Subject Matter Experts (SMEs)
Eleven days after the Federal Circuit’s en banc opinion in Wi-Fi Onc, LLC v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), a three-judge panel granted a petition by patent owner Click-to-Call...more
2/6/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
Broadcom ,
Certiorari ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Remand ,
Time-Barred Claims ,
USPTO ,
Wi-Fi One
On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more
On September 13, 2017, the PTAB, a five-judge panel, granted a petition to institute an inter partes review brought by HTC America, Inc. (“Petitioner”) against Virginia Innovation Sciences, Inc. (“Patent Owner”) regarding...more
In Personal Audio, LLC. v. Electronic Frontier Foundation, No. 2016-1123 (Fed. Cir. Aug. 7, 2017), the Federal Circuit reviewed a Patent Trial and Appeal Board (“PTAB”) decision invalidating claims of U.S. Patent No....more
8/31/2017
/ Anticipation ,
Appeals ,
Article III ,
Electronic Frontier Foundation ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Public Interest Entities ,
Reaffirmation ,
Standing
In an order entered June 30, 2017, the PTAB denied a motion by counsel for patent owner Purple Leaf, LLC (“Counsel”) to withdraw from representation in a trio of IPRs (IPR2016-01720, IPR2016-01721, and IPR2016-01722). Counsel...more
On May 8, 2017, in Intellectual Ventures II LLC v. Ericsson Inc., 15-1739, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) inter partes review (IPR) claim constructions in a non-precedential decision....more
In connection with a dispute over parking meters, the PTAB, on March 27, 2017, issued a decision in IPR2016-00067 that Duncan Parking Technologies, Inc. (DPT) had not met its burden of showing, by a preponderance of evidence,...more
Since their introduction as part of the America Invents Act, Inter Partes Reviews (IPRs) have proven to be a powerful tool for parties accused on patent infringement. One important constraint on their deployment is a one year...more