Third-party IPRs can moot previously favorable decisions and leave a previously successful party to bear its own costs. On October 16, 2024, Judge Rodney Gilstrap denied the plaintiff’s Motion to be Confirmed as the...more
Almost 15 years ago, in an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules (“LPR”).1 This annotated version of the LPRs is released...more
Just because a document is archived on the Internet Archive’s Wayback Machine® does not necessarily qualify it as prior art for an IPR challenge. ...more
Ten years ago, in an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules ("LPR") This annotated version of the LPRs is released in honor...more
11/5/2019
/ Claim Construction ,
Discovery ,
Electronically Stored Information ,
Federal Rules of Civil Procedure ,
Local Patent Rules ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pleading Standards ,
State and Local Government ,
State Pilot Programs
Is the little-used CBM patent review program the key to passage of § 101 legislation?
Congress is currently considering legislation to drastically alter the patent eligibility statute, 35 U.S.C. § 101.
The unabashed...more
Estimates are that roughly 80% of IPRs involve a challenge to a patent being asserted against the petitioner in a district court litigation. Typically, in those IPRs, if the litigation-defendant-petitioner loses at the PTAB,...more
A Covered Business Method (“CBM”) patent review permits a petitioner to challenge a patent having claims “used in the practice, administration, or management of a financial product or service,” and that do not claim a...more
In an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules ("LPR") effective as of October 1, 2009. This annotated version of the LPRs...more
The AIA prohibits institution of a post-grant proceeding when the petitioner previously “filed a civil action challenging the validity of a claim of the patent.” 35 U.S.C. § 315(a)(1). PGR petitions (including CBM petitions)...more
4/11/2018
/ America Invents Act ,
Counterclaims ,
Declaratory Judgments ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Venue
In a closely followed case before the U.S. Supreme Court on behalf of SAS Institute Inc., a cross-office, cross-practice Jones Day team has challenged the Patent Trial and Appeal Board’s (PTAB) practice to elect to institute...more
By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental...more
6/21/2017
/ Administrative Procedure ,
Inadmissible Evidence ,
Inter Partes Review (IPR) Proceeding ,
Newly Discovered Evidence ,
Novo Nordisk ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Review ,
Prior Art ,
Supplemental Information
The en banc Federal Circuit is currently considering whether the PTAB’s findings regarding 35 U.S.C. § 315(b)’s one year bar on IPR petitions can be reviewed on appeal. In Wi-Fi One v. Broadcom Corp, the en banc Court is set...more
5/12/2017
/ § 315(b) ,
Appeals ,
Cuozzo Speed Technologies v Lee ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Limitation Periods ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents
As we have previously discussed on this blog, when considering an issue of patentability such as definiteness under section 112, the PTAB and a district court may properly reach opposite conclusions. In Tinnus Enterprises LLC...more
As we reported earlier, the Federal Circuit decided in January 2017 to rehear en banc whether the PTAB’s findings regarding 35 U.S.C. § 315(b)’s one year bar can be reviewed on appeal. Wi-Fi One v. Broadcom Corp. The...more
4/8/2017
/ En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Reviewability Determinations ,
Statute of Limitations ,
Time-Barred Claims ,
USPTO