The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same...more
1/13/2025
/ Administrative Procedure Act ,
Denial of Institution ,
Dish Network ,
Intellectual Property Litigation ,
Inter Partes Review (IPR) Proceeding ,
Patent Act ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the...more
In a recent decision, the PTAB granted institution of an IPR despite multiple parallel district court proceedings involving the same patent, and flatly rejected the Patent Owner’s argument that the Petitioner’s “conflicting”...more
After finding that Apple infringed certain AliveCor patents related to wearable devices capable of monitoring a user’s cardiac activity, the International Trade Commission (“ITC”) entered a limited exclusion order and a cease...more
A PTAB panel recently granted a Petitioner’s motion to submit a second expert declaration that directly addressed deficiencies identified by the PTAB’s Institution Decision. While a “close” case, the panel concluded that...more
In the precedential decision Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017), the PTAB articulated seven non-exclusive factors to be considered before discretionarily denying a...more
The Patent Act provides that “[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. In a recent denial of a motion for attorney fees pursuant to § 285, an Ohio...more
In a recent decision invalidating numerous claims of a patent related to cochlear implants for hearing loss, the PTAB found that Petitioner improperly relied on applicant admitted prior art (AAPA) as the “basis” for one...more
4/22/2022
/ Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Lack of Authority ,
Patent Applicants ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Statutory Authority
The Federal Circuit recently issued another decision in a longstanding dispute between Willis Electric Co. and Polygroup Ltd. involving two patents owned by Willis (U.S. Patent Nos. 8,454,186 and 8,454,187) directed to...more
2/3/2022
/ CAFC ,
Claim Construction ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Reversal ,
Vacatur
The Federal Circuit continues to be flooded with petitions to revisit its panel decision in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, No. 2018-2140 (Fed. Cir. 2019). As previously discussed, all three parties in...more
January 17 Update: On January 17, each of the parties filed responses to the rehearing petitions -
As we have previously discussed on this blog and elsewhere, the Federal Circuit’s decision in Arthrex v. Smith & Nephew...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
As we have previously discussed on this blog and elsewhere, the Federal Circuit’s decision in Arthrex v. Smith & Nephew has generated significant discussion and controversy in the patent world. On December 16, both parties...more
The Patent Trial and Appeal Board (“PTAB”) recently issued a Final Written Decision in favor of Comcast Cable Communications, LLC (“Comcast”) and against Promptu Systems Corporation (“Promptu”) in a covered business method...more
10/24/2019
/ Comcast ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Final Written Decisions ,
Patent Applications ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Printed Publications ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112 ,
USPTO
The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive”...more
9/10/2019
/ Denial of Rehearing ,
Evidence ,
Expert Witness ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Subject Matter Experts (SMEs)
On March 13, 2019, the PTAB issued the fifth installment of its ongoing Motion to Amend Study, which tracks and analyzes motions to amend filed in AIA trials through September 30, 2018 (end of Fiscal Year 2018).
The data...more
When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more
2/21/2019
/ Appeals ,
Estoppel ,
Final Written Decisions ,
Inter Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents
Since April 2018 when the U.S. Supreme Court handed down its Oil States decision, patent owners have made various arguments addressing issues that were not resolved in that case. One such example is Christy, Inc. v. United...more
When an IPR petition results in a final written decision, the IPR petitioner (or the petitioner’s real party in interest or privy) is estopped from asserting in a civil litigation or an ITC action that “the claim is invalid...more
A recent decision by the Patent Trial and Appeal Board (“PTAB”) denying a petition for inter partes review serves as a stark reminder of the oft-repeated truism, “don’t wait until the last minute.” See VIZIO, Inc. v. ATI...more
The America Invents Act (“AIA”) provides that a “[a] person may not file a petition for [covered business method review] unless the person or the person’s real party in interest or privy has been sued for infringement or...more
The Federal Circuit’s recent decision in Apator Miitors ApS v. Kamstrump A/S, No. 2017-1681 (Fed. Cir. Apr. 17, 2018) (Moore, joined by Linn and Chen) serves as another reminder to sufficiently corroborate inventor testimony...more
On March 20, 2018, the PTAB issued a Final Written Decision in Kapsch TrafficCom IVHS Inc. v. Neology, Inc., Case IPR2016-01763, Paper 60 (PTAB Mar. 20, 2018), finding that Petitioner Kapsch TrafficCom IVHS Inc. (“Kapsch”)...more