The PTAB Precedential Opinion Panel (“POP”) has concluded that the one-year time bar for filing an IPR petition under 35 U.S.C. § 315(b) is triggered by the service of a complaint alleging infringement even if “the serving...more
In a recent decision, the PTAB decided to institute inter partes review (“IPR”) of U.S. Patent No. 7,937,394 B2 despite Patent Owner’s claims that Petitioner engaged in gamesmanship and asserted references and combinations...more
The PTAB recently designated two decisions as precedential and one decision as informative on discretion to institute review.
Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017)...more
Reexamination can be stayed pending IPR proceedings for good cause shown. The PTAB recently found good cause for a stay had been established when the reexamination proceedings and IPR proceedings had only a single claim in...more
In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying...more
Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding video data. The...more
Our prior post on the PTAB’s second update to the AIA Trial Practice Guide (TPG), published July 15, 2019, highlighted the additional guidance provided for petitions, patent owner preliminary responses and claim construction....more
7/26/2019
/ Additional Discovery ,
Covered Business Method Patents ,
Discovery ,
Expert Testimony ,
Garmin Factors ,
Guidance Update ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Motion to Amend ,
Post-Grant Review ,
Preponderance of the Evidence ,
Trial Practice Guidance ,
Witnesses
On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board.
The...more
7/24/2019
/ Additional Discovery ,
America Invents Act ,
Claim Construction ,
Covered Business Method Patents ,
Cross Examination ,
Expert Testimony ,
Guidance Update ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Trial Practice Guidance ,
USPTO
Relying on 35 U.S.C. § 314(a), the Patent Trial and Appeal Board has articulated its reluctance to review “follow-on” petitions challenging the validity of patents that have been previously subjected to inter partes review....more
The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board.
The USPTO published the original TPG in August 2012, concurrent with the...more
On July 2, 2019, Judge Cote of the Southern District of New York issued an opinion that denied a motion for a preliminary injunction ordering the defendant to withdraw its petitions for inter parties review (“IPR”) at the...more
7/11/2019
/ Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
Irreparable Harm ,
License Agreements ,
Misappropriation ,
Non-Disclosure Agreement ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Preliminary Injunctions ,
Samsung ,
Trade Secrets
In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section...more
6/28/2019
/ § 315(b) ,
Appeals ,
Chevron Deference ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Mergers ,
Patent Infringement ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Time-Barred Claims
The United States District Court for the Central District of California recently denied Defendant Adobe Systems Inc.’s motion to stay litigation pending resolution of parallel inter partes review (“IPR”) proceedings before...more
6/21/2019
/ Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Motion To Stay ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Real Party in Interest ,
Section 337 ,
Third-Party
In a rare successful motion to amend, the PTAB found certain claims of a pipeline monitoring systems patentable, and allowed substitution of amended claims for others deemed unpatentable. See Syrinix Inc. v. Blacoh Fluid...more
The Federal Circuit recently tightened the standing requirements for an IPR appeal in AVX Corp. v. Presidio Components, Inc., No. 18-1106, 2019 WL 2079178 (Fed. Cir. May 13, 2019). AVX previously challenged the validity of...more
6/7/2019
/ §315(e) ,
Anti-Competitive ,
Article III ,
Estoppel ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Redressability ,
Standing
Petitioners beware. The PTAB will not “play archaeologist with the record” or assume the burden of making arguments if the Petitioner fails to present the asserted reasons for invalidity with the required specificity. Amazon...more
Institution rates have ticked up while petition filing rates are down slightly so far compared to fiscal year 2018. The running rate for institutions through the first six months of FY 2019 is at 64% compared to 60% in the...more
Our previous blog post on NHK Spring Co. v. Intri-Plex Techs., Inc., No. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), noted the PTAB’s exercise of its § 314(a) discretion to deny IPR institution, despite the...more
In past decisions, the Federal Circuit has made clear that a petitioner appealing a PTAB’s final written decision upholding the patentability of challenged claims after an AIA trial must establish Article III standing. In...more
In an order designated precedential, the PTAB terminated an instituted IPR proceeding after the petitioner failed to establish that no real parties in interest (“RPI”) or privies had been served with a complaint more than one...more
On April 22, 2019, the PTAB issued an order that the Petitioner must explain the differences among its five petitions to institute inter partes review over the same patent, and that the Patent Owner may respond as to whether...more
In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny inter partes review of Perfect Company’s (“Patent Owner”) patent. Adaptics Ltd. v. Perfect Co., IPR2018-01596 (March 6, 2019). A panel...more
Generally, the PTAB does not allow live testimony at oral argument, but recently it designated one of its 2014 decisions as precedential to give guidance as to when the Board will allow live testimony at oral argument. K-40...more
4/1/2019
/ Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
New Evidence ,
Oral Argument ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Testimonial Statements ,
Trial Practice Guidance ,
Witnesses
On October 29, 2018, the Office published a request for comments (“RFC”) on a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively...more
Presidio Components, Inc. (“Presidio”) petitioned for inter partes review (IPR) of U.S. Patent No. 6,144,547 (the “‘547 Patent”), which American Technical Ceramics Corp. and AVX Corporation (together “plaintiffs”) asserted...more