In Apple Inc. v. Masimo Corp., the PTAB granted Masimo, the owner of patent 10,687,745 (“the ’745 patent”), their request for production directed to “specific documents identified in regard to [a prior] ITC Investigation,...more
USPTO Director Kathi Vidal recently vacated a PTAB decision denying institution of a post-grant review and remanded the case for further proceedings. The petitioner challenged claims 1–27 of the ’274 patent under 35 U.S.C. §...more
An IPR “shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” ...more
In Apple, Inc. v. Katherine K. Vidal, the Federal Circuit ruled that Apple and the other plaintiffs could continue their suit on a lone surviving challenge to the PTAB Director’s rulemaking procedures regarding institutional...more
On February 24, 2023, Director Kathi Vidal issued a decision under director review granting rehearing and modifying the final written decision for Nested Bean, Inc. v. Big Beings USA Pty. Ltd. Nested Bean, Inc. (“Nested...more
In IPR2022-01242, Director Vidal clarified that her prior guidance, which allows the Board to institute inter partes review even if the Fintiv factors favor discretionary denial first requires the Board to find that Fintiv...more
Proof of prior art is an issue that often arises in inter partes and post grant review proceedings before the PTAB. In a recent decision, the Federal Circuit explained the quantum of proof that is required to establish prior...more
On November 18, 2022, a panel of three PTAB administrative patent judges denied a Patent Owner’s Request for Additional Discovery in Twitter, Inc. v. Palo Alto Research Center Inc., IPR2021-01398. The PTAB found that...more
The PTAB denied a request for institution and joinder because the petitioner was the petitioner in one other instituted IPR directed to the same patent, and the petitioner did not explain adequately to the PTAB why another...more
A PTAB panel recently denied Linquet Technologies, Inc.’s (“Patent Owner”) motion to dismiss an IPR proceeding as moot despite a district court having already invalidated the patent because the final written decision had...more
The PTAB recently hosted a Boardside Chat on effectively presenting technology in AIA proceedings. Patent Trial and Appeal Board Boardside Chat: Presenting Technology in AIA Proceedings, (Nov. 17, 2022) (“Presenting...more
Patent Owner, IP Bridge, filed a patent infringement suit against Petitioner, Ericsson, for infringement of seven of its patents directed at radio communication between a base station and a mobile station and related...more
On March 3, 2021, Via Transportation, Inc. (Plaintiff/Patent Owner) filed an infringement suit against RideCo Inc. (Defendant/Petitioner) in the U.S. District Court for the Western District of Texas for infringement of U.S....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
Patent Owner, C.R. Laurence Co. Inc. (CRL), filed a patent infringement suit against Petitioner, Frameless Hardware Company LLC (FHC) for infringement of U.S. Patent No. 9,074,413 (the ‘413 patent) directed to framing members...more
On August 5, 2022, in Thader v. Vidal, the Federal Circuit affirmed that patent inventors must be natural persons, rejecting a technologist's attempt to name an artificial intelligence as the sole inventor on patent...more
On June 1, 2022, the U.S. Court of Appeals for the Federal Circuit (“CAFC”) affirmed the Patent Trial and Appeal Board’s (“PTAB”) decisions in ClearOne, Inc. v. Shure Acquisition Holdings, Inc. regarding classification of the...more
On June 1, 2022, the Patent Trial and Appeal Board issued a Final Written Decision finding unpatentable three claims of AutoStore Technology AS’s (“AutoStore’s”) U.S. Patent No. 10,294,025 (“the ’025 patent”), while finding...more
On May 3, 2022, a panel of three PTAB administrative patent judges granted a motion for additional discovery in TCL Industries Holdings Co., Ltd. v. Parkervision, Inc., IPR2021-00985, (PTAB 2022), in which the PTAB deemed the...more
On May 9, 2022, the Patent Trial and Appeal Board denied Hillman Group, Inc.’s (“Hillman’s”) three petitions for inter partes review. See The Hillman Group, Inc. v. Hy-Ko Products Co. LLC, IPR2022-00168, -00169, and -00174....more
Within the past few weeks, the PTAB has issued new guidance addressing a number of important issues including the use of applicant admitted prior art, the Director review process, and changes to PTAB hearings going...more
Since the passage of the America Invents Act in 2012, both petitioners and patent owners have expressed concerns regarding the procedures and practices of the Patent Trial and Appeal Board (PTAB). In an effort to respond to...more
6/24/2022
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U.S. Patent and Trademark Office (“USPTO”) Director Vidal is initiating sua sponte review of the Patent Trial and Appeal Board’s (“PTAB”) decisions to institute inter partes review of two patents owned by VLSI Technology LLC,...more
On June 16, Senators Leahy, Cornyn, and Tillis introduced the PTAB Reform Act of 2022. The full text of the bill is available...more
In a recent decision, 25 F.4th 1035 (Fed. Cir. 2022), the Federal Circuit dismissed for lack of jurisdiction an appeal of the PTAB’s decision that estopped a Petitioner from maintaining a third IPR that challenged the same...more