The USPTO Director vacated the board’s decision to institute inter partes review based on an erroneous application of the Fintiv factors. Specifically, the Director found that the board placed too much emphasis on...more
The Federal Circuit recently refused to apply collateral estoppel to claims of a patent asserted in district court litigation based on a Patent Trial and Appeal Board (PTAB) decision finding similar claims from the same...more
The Central District of California denied a defendant’s motion to dismiss or transfer plaintiff’s first-filed declaratory judgement action based on defendant’s later-filed patent infringement suit in Wisconsin. Though suit...more
The District of Delaware recently denied in part a motion to compel production of documents and testimony between a patentee and potential investors, valuation firms and an international bank based on the common interest...more
The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more
10/30/2024
/ Discovery ,
Evidence ,
Intellectual Property Protection ,
International Trade Commission (ITC) ,
Motion to Compel ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Semiconductors
The Director of the USPTO initiated sua sponte review of a PTAB panel’s decision to impose sanctions based on patentee’s conduct during IPR proceedings.The PTAB cancelled all of patentee’s claims, including those not...more
9/24/2024
/ America Invents Act ,
Duty of Candor ,
Ethics ,
Good Faith ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patentability Search ,
Patents ,
Prior Art ,
Sanctions ,
USPTO
The Federal Circuit dismissed an appeal of a final written decision in an IPR based on issue preclusion where a district court had dismissed a complaint finding the patent claims subject-matter ineligible. The patentee had...more
The Patent Trial and Appeal Board granted institution of inter partes review after petitioner submitted a Sotera stipulation to patent owner via email, several days after patent owner’s preliminary response. The board...more