In two related decisions, the Federal Circuit held that the Patent Owner, Acoustic Technology, Inc. (“Acoustic”) waived its time-bar challenges under 35 U.S.C. § 315(b) (“Section 315(b)”) by failing to assert them in the IPR...more
The institution rate for post-grant challenges in current FY 2020 (Oct. 1, 2019 through January 31, 2020) stands at 56% compared to 63% in the previous fiscal year. While a relatively small sample size (204 instituted, 161...more
The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., — F.3d —, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not...more
2/19/2020
/ Final Written Decisions ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
Means-Plus-Function ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Samsung ,
Section 112
In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims. See Rimfrost AS v. Aker Biomarine Antarctic...more
On January 31, 2020, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (“PTAB”) final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits and questioned the...more
2/15/2020
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
USPTO ,
Vacated
The institution rate for post-grant challenges in current FY 2020 (Oct. 1, 2019 through December 31, 2019) stands at 55% compared to 63% in the previous fiscal year. While a small sample size (138 instituted, 113 denied),...more
On September 12, 2018, the PTAB in NHK Spring Co. v. Intri-Plex Techs., Inc. exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an IPR, despite the petition’s timely filing, due to a parallel district...more
Determining the Real Party-in-Interest (“RPI”) in an IPR can have critical implications for estoppel. A patent owner can prevent institution of an IPR by showing that an RPI has previously “filed a civil action challenging...more
In a series of IPR proceedings between Petitioner Adobe Inc. and Patent Owner RAH Color Technologies LLC, the Patent Trial and Appeal Board declined to extend attorney work product protection to deposition questions seeking...more
1/28/2020
/ Attorney Communications ,
Discovery ,
FRCP 26 ,
Inter Partes Review (IPR) Proceeding ,
Motion to Compel ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Testimony ,
Work-Product Doctrine
A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a “printed publication”? On December 20, 2019, the...more
The Federal Circuit and the patent world continues to grapple with the court’s decision in Arthrex v. Smith & Nephew. Since our last updates, the parties in Arthrex and other cases have continued the push for en banc...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
USPTO ,
Vacated
The institution rate for post-grant challenges in current FY 2020 (Oct. 1, 2019 through November 31, 2019) stands at 50% compared to 63% in the previous fiscal year. While a small sample size (88 instituted, 88 denied), this...more
The Federal Circuit’s decision in Arthrex v. Smith & Nephew excited and disrupted the patent world... Inter partes review (IPR) reshaped patent law and patent litigation this decade after the America Invents Act took effect....more
12/17/2019
/ Administrative Patent Judges ,
America Invents Act ,
Appeals ,
Appellate Briefs ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
During an inter partes review (IPR), it is usually the Petitioner that raises grounds of unpatentability against a Motion to Amend that the Patent Owner must defend in front of the Patent Trial and Appeal Board (PTAB). Is the...more
On Tuesday, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet conducted a hearing to discuss recent court decisions, namely the Federal Circuit’s decision in Arthrex. Previously...more
Following up on a November 4th oral argument (accessible here) that focused on the Arthrex Appointments Clause issue, the Federal Circuit has requested additional briefing from Polaris, Kingston, and the U.S. regarding the...more
11/15/2019
/ Administrative Patent Judges ,
Administrative Procedure ,
Appeals ,
Appointments Clause ,
Inter Partes Review (IPR) Proceeding ,
Non-Judicial Settlement Agreements ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Retroactivity
Judge Dyk and Judge Newman disagree with the Arthrex remedy requiring rehearing. In Arthrex, the Federal Circuit panel of Judges Moore, Reyna, and Chen held the appointment of Administrative Patent Judges (APJs) was an...more
11/12/2019
/ Administrative Patent Judges ,
Administrative Procedure ,
Appointments Clause ,
Inter Partes Review (IPR) Proceeding ,
Non-Judicial Settlement Agreements ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Retroactivity ,
Statutory Interpretation
On October 10, 2019, the Patent Trial and Appeal Board (“PTAB”) issued a Final Written Decision in favor of Avepoint, Inc. (“Avepoint”) and against Onetrust, LLC (“Onetrust”) in an America Invents Act post grant review...more
The status of a parallel district court proceeding may provide a basis for the PTAB to deny institution of an IPR pursuant to § 314(a). NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sep. 12, 2018)...more
Last year, this blog discussed various strategic considerations for litigants seeking declarations of invalidity in district court actions to avoid being precluded from also seeking inter partes or other post-grant review...more
10/14/2019
/ Counterclaims ,
Declaratory Judgments ,
Inter Partes Review (IPR) Proceeding ,
Mylan Pharmaceuticals ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Pharmaceutical Patents ,
Post-Grant Review ,
Real Party in Interest ,
Time-Barred Claims
The PTAB has been very active in designating decisions precedential and informative in 2019. Here’s a recap of designations so far...more
The PTAB has previously applied to IPR filings the statutory grace period under 35 U.S.C. § 21(b) for USPTO papers and fees due on a weekend or holiday. See Samsung Elecs. Co. v. Immersion Corp., Case IPR2018-01468, slip op....more
On September 6, 2019, a PTAB panel including USPTO Director Andrei Iancu instituted inter partes review (“IPR”) of U.S. Patent No. 9,279,259 (“the ‘259 Patent”). The ‘259 Patent is directed to a tile lippage removal system...more
If you don’t have new grounds to add, you may as well copycat. On September 4, 2019, the PTAB denied Microsoft’s petition requesting inter partes review (“IPR”) of U.S. Patent No. 7,167,487 (“the ’487 patent”); furthermore,...more
The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the...more