In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv...more
A recent board decision denying inter partes review serves as a reminder that an expert opining on obviousness must at least meet the definition of an ordinarily skilled artisan. The patent at issue related to a...more
Petitioners moved for an order requiring Patent Owner to produce discovery comprising Final Infringement Contentions from related district court litigations between the parties. Petitioners set forth two independent bases...more
A judge in the District of Delaware has ruled that an estoppel under 35 U.S.C. § 315(e)(2) does not apply to prior-art products, even if those products are “cumulative” of prior-art patents or printed publications that were...more
The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more
Key Points -
On June 21, 2022, USPTO Director Katherine K. Vidal issued a memorandum titled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings With Parallel District Court Litigation.”
Under...more
In a recent order, the Eastern District of Texas declined to preclude a defendant from raising prior art system references despite patentee’s argument that similar printed publications could have been raised in earlier inter...more
A district court recently denied a motion for attorney’s fees under 35 U.S.C. § 285 where the defendant successfully invalidated each claim of the patent at issue during an inter partes review proceeding. The district court...more
In a recent inter partes review proceeding, the Patent Trial and Appeal Board relied on compelling evidence of secondary considerations to hold all challenged claims not unpatentable under 35 U.S.C. § 103. Specifically, the...more
In an inter partes review, the Patent Trial and Appeal Board applied guidance from the U.S. Patent and Trademark Office and declined to consider an obviousness ground that was based on admissions about prior art in the...more
In two related inter partes review proceedings, the Patent Trial and Appeal Board granted a petitioner’s motion to exclude the declaration of an inventor because the patent owner failed to make him available for...more
Applying recent Federal Circuit precedent requiring language evincing a present conveyance of patent rights, a district court in the Western District of Pennsylvania found that the contractual language “shall become the...more
A judge in the Northern District of Georgia has granted a defendant’s motion to dismiss a patent infringement case for failure to state a claim under Rule 12(b)(6). The court found that the complaint failed to meet the...more
The Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence,...more
Disputes as to the licensing of standard-essential patents (SEP) and determination of fair, reasonable and non-discriminatory (FRAND) terms are typically resolved through either negotiation or litigation in national courts....more
A judge in the Eastern District of Virginia recently held that cancellation of independent claims in an inter partes review (IPR) did not preclude the plaintiff from asserting infringement based on the doctrine of equivalents...more
More than a year after its last precedential designation, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board has held that Fedwire confirmation of payment constitutes sufficient evidence that the...more
Successfully licensing standard-essential patents (SEPs) is key to a company’s ability to manufacture and sell products that practice a standard. With revolutionary advances in technology on the horizon, licensing of SEPs...more
A panel of the Patent Trial and Appeal Board instituted inter partes review of a patent, rejecting the patent owner’s assertion that the petitioner’s obviousness arguments were collaterally estopped by a district court’s...more
In a series of related inter partes review proceedings, the Patent Trial and Appeal Board recently granted a petitioner’s motion to strike the sworn affidavit of a witness who was unwilling to submit to cross-examination. In...more
In a rare move, the interim Director of the U.S. Patent Office granted review of a final written decision in an inter partes review proceeding. In its request for Director review, the patent owner argued that the Patent Trial...more
The Chief Judge of the United States District Court for the District of Colorado recently denied a plaintiff’s bid to overturn a protective order preventing the plaintiff from taking 30(b)(6) deposition testimony on a...more
The Eastern District of Texas has rejected a plaintiff’s argument that if a patent owner concedes in an inter partes review (IPR) that a prior art reference discloses all elements of a patent claim, the reference necessarily...more
During a Markman hearing, a judge in the Eastern District of North Carolina denied a plaintiff’s request that the defendant be judicially estopped from arguing claim constructions that were different from positions the...more
Inter partes review (IPR) proceedings can give rise to statutory and collateral estoppel. But these two bases for estoppel attach at different times, which can lead to asymmetrical outcomes in related district court...more