As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the...more
On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”). The ’768 Patent...more
5/8/2025
/ Advertising ,
Appeals ,
Digital Media ,
Hulu ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Section 101 ,
Statutory Interpretation ,
Vacated
It is relatively uncommon for parties to submit expert declarations in the preliminary-response phase of an IPR proceeding, but recently the Patent Owner in Imperative Care, Inc. v. Inari Medical, Inc. effectively used that...more
4/21/2025
/ Claim Construction ,
Expert Testimony ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Life Sciences ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Prior Art
When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are “unavailing.” ...more
“The statutory provisions for inter partes reviews, post-grant reviews, and covered-business method patent reviews caution against overly broad discovery and provide the same considerations, including efficient administration...more
In 2016, the Federal Circuit expressed doubt that claim constructions from the PTAB could give rise to estoppel in later litigation because “the [PTAB] applies the broadest reasonable construction of the claims while the...more
Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review. In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent...more
In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB”) decision in holding that certain claims of the Virtek patent (U.S. Patent No. 10,052,734) were unpatentable as obvious. See...more
It goes without saying that claim construction is an important issue, but the PTAB’s recent decision in Netflix, Inc. v. DIVX, LLC, IPR2020-00558, Paper 66 (PTAB Feb. 22, 2024), shows not only that reasonable minds can differ...more
3/29/2024
/ Claim Construction ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art
The PTAB requires that all petitioners in IPR and PGR proceedings disclose the real party(ies)-in-interest. While that might seem like a mere formality, a false disclosure can lead to very harsh consequences....more
An IPR “shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” ...more
On May 26, 2022, the Patent Office issued its “Interim Process for PTAB Decision Circulation And Internal PTAB Review”. The Office issued the Process to explain its new procedures for circulating pre-issuance decisions, which...more
In the PTAB’s recent decision in Code 200 v. Bright Data Ltd., IPR2021-01503, Paper No. 13 (PTAB Mar. 14, 2022), the PTAB expounded upon the circumstances in which joinder of a “me-too” case under § 315(b) was not...more
This blog has previously discussed PTAB’s exercise of discretion under Section 325(d). Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d) and instituted inter...more
The statistics from the PTAB for FY2021 are in, and the total PTAB petitions filed in FY2021 are down a bit from the previous year. A total of 1,401 petitions were filed—IPR (1308) and PGR (93)—compared to 1513 in FY2020,...more
This blog has previously discussed the Federal Circuit’s decision in Becton, Dickinson and Co. v. Baxter Corp. Englewood, — F.3d —, No. 2020-1937, 2021 WL 2176796 (Fed. Cir. May 28, 2021). See Telepharma Disconnect: Federal...more
This blog has previously discussed the effect of several different types of estoppel. See, e.g., Estoppel Estopped for Remanded Claims, Reminder: Estoppel May Not Preclude Prior-Art Systems, and PGR Estoppel Applies to...more
Although the PTAB had previously stated that it would “rarely” be appropriate for a petitioner to file multiple petitions against the same patent, in Dolby Laboratories, Inc. v. Intertrust Technologies Corp., IPR 2020-01104;...more
The estoppel statute precludes a defendant who has challenged a claim in an IPR reaching final written decision from later challenging that claim on any ground that it raised or reasonably could have raised during the IPR...more
Recently, we reported about the Supreme Court’s decision holding that the AIA’s “no appeal” provision in 35 U.S.C. § 314(d) means that the PTAB’s decision not to institute IPR because a petition is time barred under 35 U.S.C....more
This week, the United States Supreme Court interpreted the scope of the AIA’s “no appeal” provision found in 35 U.S.C. § 314(d) (“Section 314(d)”). Thryv, Inc. v. Click-to-Call Techs, L.P., No. 18-916, 2020 WL 1906544 (Apr....more
4/27/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
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
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
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
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