The Patent Trial and Appeal Board has denied institution of an inter partes review, in part because the petitioner failed to show that a key reference qualified as prior art. The PTAB ruled that the petitioner was required to...more
A judge in the District of Delaware has ruled that an estoppel under 35 U.S.C. § 315(e)(2) does not apply to prior-art products, even if those products are “cumulative” of prior-art patents or printed publications that were...more
The Patent Trial and Appeal Board denied institution of a petition for inter partes review (IPR), in part because an allegedly anticipatory prior art patent lacked an element of what the board determined was a limiting...more
Objective evidence of nonobviousness traces its roots to 19th century case law from the U.S. Supreme Court.
The analysis of such secondary considerations as commercial success, failure of others, and long-felt but...more
A district court has ruled that the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) did not apply to invalidity grounds that relied on physical products. The court also declined to apply judicial estoppel, notwithstanding...more
A district court has ruled that the statutory estoppel arising from an inter partes review (IPR) proceeding does not apply to anticipation and obviousness defenses that rely significantly on a physical device. The court also...more
A petition for inter partes review (IPR) has been denied because the petitioner failed to rebut the patent owner’s claim of priority raised in its preliminary response. In denying institution, the Patent Trial and Appeal...more
An accused infringer in a district court case could not take advantage of a prior claim construction ruling from an inter partes review (IPR) proceeding involving unasserted claims of the same patent. The Patent Trial and...more
In a remanded inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (PTAB) held that Patent Owner Intellectual Ventures II LLC had successfully antedated a prior art reference asserted by Petitioner Motorola...more
Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more
2/3/2020
/ Estoppel ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patents ,
Printed Publications ,
Prior Art ,
Summary Judgment
The Patent Trial and Appeal Board (PTAB) has rejected a patent owner’s argument that judicial estoppel should prevent a petitioner from making obviousness arguments in support of its petition for inter partes review (IPR)....more
The Federal Circuit rejected a patent owner’s time-bar challenge to an inter partes review (IPR) proceeding, holding that the patent owner failed to provide sufficient details to establish proper service of a complaint for...more
A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more
11/13/2019
/ Affirmative Defenses ,
Estoppel ,
Evidence ,
Final Written Decisions ,
FRCP 12(f) ,
Inter Partes Review (IPR) Proceeding ,
Motion To Strike ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent-Eligible Subject Matter ,
Patents ,
Pleadings ,
Post-Grant Review ,
Prior Art ,
Question of Fact ,
Section 101
The Patent Trial and Appeal Board has granted in part a Patent Owner’s motion to strike Petitioner’s Reply for improperly raising new arguments and citing new evidence. The Board, however, declined to throw out the entirety...more
10/14/2019
/ Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Motion To Strike ,
Obviousness ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Petitioner Reply Briefs ,
Prior Art ,
SAS Institute Inc. v Iancu ,
State of the Art Defense
A Patent Trial and Appeal Board (PTAB) panel has denied institution of an inter partes review proceeding because the petitioner did not establish that key references were properly qualified as printed publications under 35...more
A judge in the Northern District of California has enjoined a group of defendants from selling a laboratory DNA sequencing machine. The plaintiff first asserted the patent against one defendant in litigation in the District...more
FEDERAL CIRCUIT -
Federal Circuit Lacks Authority to Review Denial of Institution of IPR on Some, but Not All, Raised Grounds -
In an appeal of a decision by the Patent Trial and Appeal Board (PTAB) denying the...more
DISTRICT COURT CASES -
Attorney’s Fees Awarded Against Plaintiff for Inadequate Pre-Filing Investigation and Meritless Post-Discovery Positions -
A judge in the U.S. District Court for the Central District of...more
DISTRICT COURT CASES -
Humanized Antibody Not Found to Infringe Under DOE -
A district court judge granted UCB, Inc.’s (plaintiff) motion for summary judgment that its Cimzia® product, a humanized monoclonal...more