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
/ Claim Construction ,
Denial of Institution ,
Incorporated by Reference ,
Inter Partes Review (IPR) Proceeding ,
Means-Plus-Function ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
POSITA ,
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
/ Bar Associations ,
Inter Partes Review (IPR) Proceeding ,
LEAP ,
Litigation Strategies ,
Mock Trials ,
Oral Argument ,
Patent Litigation ,
Patents ,
Trial Practice Guidance ,
Trial Preparation ,
USPTO ,
Young Lawyers
In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more
The institution rate for post-grant challenges in current FY 2020 (Oct. 1, 2019 through June 30, 2020) stands at 56% (478 instituted, 376 denied) compared to 63% in the previous fiscal year. This lower institution rate...more
In Ericsson Inc. v. Uniloc 2017, LLC, IPR2019-01550 (PTAB March 17, 2020) (Paper 8), the PTAB denied institution of inter partes review under 35 U.S.C. § 314, exercising its discretion to deny “follow-on petitions”...more
Recently, we reported about the Supreme Court’s decision holding that the AIA’s “no appeal” provision in 35 U.S.C. § 314(d) means that the PTAB’s decision not to institute IPR because a petition is time barred under 35 U.S.C....more
On June 18, 2020, the PTAB denied an IPR petition because the Petitioner failed to sufficiently construe the means-plus-limitations of the challenged claims.
Mattersight Corporation (“Mattersight”) owns the challenged...more
In Amneal Pharmaceuticals LLC v. Almirall, LLC, the Federal Circuit recently found 35 U.S.C. § 285 did not authorize the Court awarding attorney’s fees for conduct occurring at the PTAB. No. 2020-1106, 2020 WL 2961939, at *2...more
6/22/2020
/ 35 U.S.C. § 285 ,
Abbreviated New Drug Application (ANDA) ,
American Rule ,
Attorney's Fees ,
Fee-Shifting ,
Generic Drugs ,
Inter Partes Review (IPR) Proceeding ,
Litigation Fees & Costs ,
Orange Book ,
Patent Litigation ,
Patents ,
Pharmaceutical Patents ,
Voluntary Dismissals
In 3Shape A/S v. Align Tech., Inc., IPR2020-00223, Paper 12 (May 26, 2020), the PTAB declined to deny institution of an inter partes review involving a patent challenged in a pending ITC investigation. Despite the advanced...more
The institution rate for post-grant challenges in current FY 2020 (Oct. 1, 2019 through April 30, 2020) stands at 55% (370 instituted, 300 denied) compared to 63% in the previous fiscal year. This lower institution rate...more
On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for material...more
The Federal Circuit’s decision in ESIP Series 2 v. Puzhen Life USA, LLC, No. 19-1659, held that the “no appeal” provision found in 35 U.S.C. § 314(d) (“Section 314(d)”) bars judicial review of PTAB determinations regarding...more
Both petitions were directed to Patent Owner Tela Innovations, Inc.’s U.S. Patent No. 7,943,966 (“the ’966 patent”). See Intel Corporation v. Tela Innovations, Inc., IPR2019-01228, Paper No. 19 (PTAB January 30, 2020); Intel...more
This week, the United States Supreme Court interpreted the scope of the AIA’s “no appeal” provision found in 35 U.S.C. § 314(d) (“Section 314(d)”). Thryv, Inc. v. Click-to-Call Techs, L.P., No. 18-916, 2020 WL 1906544 (Apr....more
4/27/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
On Monday, the Supreme Court ruled that 35 U.S.C. § 314(d)’s statement that the “determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable”...more
As was previously noted here, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth...more
The PTAB recently designated a number of cases regarding procedures for determining whether a prior art reference is a “printed publication.” One opinion regarding the difference in burdens of proving “printed publication”...more
As we noted here, the PTAB recently designated two 35 U.S.C. § 325(d) cases precedential and one informative. Here is an in depth review of the informative decision.
On March 24, 2020,the PTAB designated two sections of...more
As we noted, the PTAB recently designated two 35 U.S.C. § 325(d) cases precedential and one informative. Here is an in depth review of a first of the precedential designated decisions.
On March 24, 2020, the PTAB...more
By Matt Johnson – Last week, the PTAB designated two 35 U.S.C. § 325(d) cases precedential and one informative. These cases discuss the Board’s process for deciding when to use their discretion to deny institution because a...more