The Director of the U.S. Patent and Trademark Office vacated and remanded a decision from the Patent Trial and Appeal Board discretionarily denying institution of an inter partes review petition. The Director concluded that...more
The Patent Trial and Appeal Board recently found claims directed to a web-based point of sale system and method unpatentable as obvious after conducting a thorough examination of whether a reference with one common inventor...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
The Federal Circuit held in Dynamic Drinkware, LLC v. Nat’l Graphics, Inc., 800 F.3d 1375, 1378 (Fed. Cir. 2015) that for a pre-AIA 35 U.S.C. § 102(e) prior-art reference to be entitled to a provisional application’s priority...more
The Patent Trial and Appeal Board denied institution of a petition for IPR after determining that the petitioner failed to show a reasonable likelihood that its primary asserted reference, which was available through the...more
Federal Circuit Judge William Bryson, sitting by designation in the District of Delaware, ruled on summary judgment that inter partes review (IPR) estoppel does not apply to device art, even if the device is cumulative of...more
The Patent Trial and Appeal Board denied institution of an inter partes review after determining that petitioner failed to establish public availability of a prior art reference based on an alleged publication date listed in...more
The Patent Trial and Appeal Board granted a request for rehearing and instituted inter partes review of a web browsing patent in order to reconcile an inconsistency with a final judgment of un-patentability in the IPR of a...more
The Patent Trial and Appeal Board rejected a patent owner’s argument that the Board should exercise its discretion to deny a petitioner’s inter partes review (IPR) petition because Petitioner failed to name a time-barred real...more
The Western District of Texas recently denied a defendant’s motion to stay pending inter partes review based in part on the defendant’s status as a non-party in the IPR proceedings. In doing so, the district court focused on...more
In a final written decision of an inter partes review proceeding, the Patent Trial and Appeal Board found all 12 claims of a challenged patent unpatentable as either anticipated or obvious. Each ground of unpatentability...more
10/10/2023
/ Anticipation ,
Clinical Trials ,
Obviousness ,
Patent Applications ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prior Art
The Patent Trial and Appeal Board held that service of a bare complaint without exhibits did not trigger the one-year time bar under 35 U.S.C. § 315(b), which requires the filing of a petition for inter partes review within...more
A Petitioner filed a request for rehearing and a request for Precedential Opinion Panel review after the Patent Trial and Appeal Board (PTAB or the “Board”) rejected its petition for post-grant review. The Director of the...more
The Patent Trial and Appeal Board has denied a patent owner’s motion to terminate an inter partes review proceeding finding that the unidirectional nature of estoppel under 35 U.S.C. § 315(e) renders common-law claim...more
In a decision denying summary judgment, the District of Massachusetts weighed in on an unsettled issue: whether after receiving a final written decision in an inter partes review, a patent challenger is permitted to raise...more
The Patent Trial and Appeal Board (PTAB) granted Petitioner’s motions to sanction Patent Owner for failure to meet its duty of candor and fair dealing in five related inter partes review proceedings. The PTAB found that...more
In an appeal from the United States District Court for the Western District of Washington, the Federal Circuit confirmed that on the issue of inter partes review (IPR) estoppel, the burden of proof rests on the patentee to...more
In a sua sponte review, USPTO Director Kathy Vidal continued her refinement of the PTAB’s “discretionary denial” practice. Specifically, the Director vacated the Board’s decision to deny institution in Volvo Penta of the...more
The Patent Trial and Appeal Board recently instituted an inter partes review where the patent owner argued that the petitioner failed to establish its expert as a person of skill in the art, which would have rendered the...more
Patent Office Director Katherine Vidal recently issued a precedential decision addressing an issue of first impression before the Board: whether the patentability of multiple dependent claims must be determined separately for...more
The Patent Trial and Appeal Board recently rejected an inter partes review petition that relied on a conclusory and unsupported expert declaration. The expert’s written testimony, which repeated portions of the petition...more
The USPTO Director recently conducted sua sponte review of a Patent Trial and Appeal Board decision granting adverse judgment in four IPR proceedings where a panel found that the patent owner had abandoned the contests. In a...more
The Patent Trial and Appeal Board granted a request for rehearing of a final written decision in which it had originally determined that the challenged were not unpatentable. On rehearing, the board found that petitioner’s...more
In a precedential 52-page sua sponte decision, the United States Patent and Trademark Office (USPTO) Director Katherine Vidal addressed several issues of first impression relating to sanctionable misconduct in inter partes...more
The Patent Trial and Appeal Board denied a petition to institute inter partes review, finding there was no reasonable likelihood that petitioners would prevail on their obviousness challenges. In rendering its decision, the...more