The PTAB recently held that the General Plastic factors weighed in favor of denying a follow-on IPR petition filed after the Patent Owner filed a preliminary response to an earlier petition challenging the same patent (U.S....more
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
Although the PTAB had previously stated that it would “rarely” be appropriate for a petitioner to file multiple petitions against the same patent, in Dolby Laboratories, Inc. v. Intertrust Technologies Corp., IPR 2020-01104;...more
Although first briefly mentioned as a possibility in the August 2018 Trial Practice Guide Update (page 10), outside of one instance (Bio-Rad Labs. v. 10X Genomics, IPR2019-00567; -00568, August 8, 2019), PTAB discretionary...more
In General Access Sols., Ltd. v. Sprint Spectrum, et al., No. 2:20-cv-00007-RWS, ECF No. 128 (E.D. Tex. Dec. 1, 2020), the Eastern District of Texas denied a motion to strike invalidity defenses as barred by IPR estoppel for...more
District courts commonly stay patent litigation cases pending inter parties review (IPR) that assesses the validity of the patents-in-suit before the Patent Trial and Appeal Board (PTAB). Such stay may be lifted or extended...more
The results of a recent update to the PTAB Multiple Petition Study show Petitioners face an uphill battle when attempting to utilize a multiple petition strategy. These results, discussed during the December 10, 2020...more
The estoppel statute precludes a defendant who has challenged a claim in an IPR reaching final written decision from later challenging that claim on any ground that it raised or reasonably could have raised during the IPR...more
On December 17th, the PTAB designated two decisions applying the Fintiv factors as precedential. We will break these cases down in detail in the coming days on the PTAB Litigation Blog. Sotera Wireless, Inc. v. Masimo...more
In a non-precedential opinion, the Federal Circuit recently reaffirmed that state universities cannot use sovereign immunity to avoid patent challenges at the PTAB stating that, “sovereign immunity does not apply to IPR...more
Be careful not to confuse reprints with new editions when considering books as printed publications under 35 U.S.C. 102(b). In VidStream LLC v. Twitter, Inc., No. 2019-1734, 2020 WL 6937852 (Nov. 25, 2020), the Federal...more
On December 4th, the PTAB designated the following three cases precedential:
RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) -
This decision on remand from the...more
“Printed publication” under 35 U.S.C. § 102(b) is typically construed to encompass any type of document, as long as the document is “publicly accessible.” See, e.g., Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018)....more
In a recent precedential decision, the PTAB emphasized that objective indicia of nonobviousness must have a nexus to the claimed invention. Lectrosonics, Inc. v. Zaxcom, Inc., No. IPR2018-01129, Paper 33 (P.T.A.B. Jan. 24,...more
NeuMoDx Molecular, Inc., (Petitioner) who was otherwise barred from pursuing two IPR proceedings regarding patents owned by HandyLab, Inc. (Patent Owner) under 35 U.S.C. § 315(b)’s one year deadline, filed a Motion to Change...more
One of the steps in a proper obviousness analysis is to ascertain the scope and content of the prior art and the differences between the prior art and the claims at issue. Graham v. John Deere Co. of Kan. City, 383 U.S. 1,...more
After being sued by Uniloc in April 2018 for infringement of U.S. Patent No. 6,467,088 (“Reconfiguration Manager for Controlling Upgrades of Electronic Devices”), Apple challenged claims 1-21 of that patent at the PTAB in...more
11/6/2020
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Patent Litigation ,
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Patents
Although infrequently awarded, district courts are empowered to issue sanctions for behavior at the PTAB that they deem “exceptional” under Octane Fitness. In Game and Technology Co., Ltd. v. Wargaming Group Limited,...more
10/30/2020
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Time-Barred Claims
Total PTAB petitions remained flat in FY2020, with 1513 petitions total being filed: IPR (1429), PGR (64), and CBM (20), compared to 1464 in FY2019 and 1613 FY2018, down from 1901 in FY2017. September IPR petition filings...more
Throughout the Patent Trial and Appeal Board’s (“PTAB”) history, patent owners have tried to leverage a petitioner’s alleged failure to name all real parties-in-interest (“RPIs”) as a way to achieve denial of an inter partes...more
Current PTAB-relevant case law dictates:
35 U.S.C. § 315(b) “unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in...more
The PTAB and District Courts do not always see eye to eye when it comes to prior art. On August 21, 2020, the Board issued a trio of final written decisions refusing to invalidate the claims of three patents, two of which...more
The Patent Trial and Appeal Board (PTAB) has the discretion to deny institution of any inter partes review (IPR). Such discretionary denial may be based on a variety of considerations, such as the existence of an ongoing...more
In Samsung Elecs Co., Ltd., et al. v. Cellect, LLC, IPR2020-00474, Paper 14 (P.T.A.B. Aug. 17, 2020), the PTAB denied institution of U.S. Patent No. 6,982,740 (“the '740 patent”), finding that the specification did not...more
8/26/2020
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Means-Plus-Function ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
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Prior Art ,
Samsung
Holding its first mock oral arguments, the PTAB provided LEAP eligible participants with a unique opportunity to argue in front of PTAB judges. On August 7, 2020, mock oral PTAB hearings were held virtually with 40 LEAP...more
8/21/2020
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Inter Partes Review (IPR) Proceeding ,
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Litigation Strategies ,
Mock Trials ,
Oral Argument ,
Patent Litigation ,
Patents ,
Trial Practice Guidance ,
Trial Preparation ,
USPTO ,
Young Lawyers