The full Federal Circuit denied rehearing in Polaris. Polaris Innovations Ltd. v. Kingston Technology Company, No. 2018-1831. As previously discussed, both the U.S. government and Polaris requested rehearing after the court...more
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
In November 2019, the United States Patent and Trademark Office published a second edition of the America Invents Act (AIA) Trial Practice Guide (Practice Guide) to incorporate the Practice Guide updates released in August...more
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
In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit has held that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board ("PTAB") were in violation of the Appointments Clause of the U.S....more
On December 4, 2019, the PTAB hosted the last installment for 2019 in its “Boardside Chat” webinar series. The program, presented by Deputy Chief Judge Jacqueline Bonilla and Lead Administrative Patent Judge Jessica Kaiser,...more
On February 28, 2019, GREE, Inc. (“GREE”) filed a Complaint against Supercell Oy (“Supercell”) for patent infringement of U.S. Patent No. 9,597,594 (the “’594 Patent”), directed to a method for controlling a computer to...more
11/13/2019
/ Affirmative Defenses ,
Estoppel ,
Final Written Decisions ,
FRCP 12(f) ,
Motion To Strike ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Prior Art ,
Question of Fact ,
SAS Institute Inc. v Iancu ,
Section 101
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
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
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
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
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