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Federal Circuit: RPI Arguments Must First Be Raised at the PTAB

Apple Inc., et. al v. Gesture Technology Partners, LLC (March 4, 2025) (Moore (Chief Judge), Prost and Stoll) (on appeal from the Patent Trial and Appeal Board) [WAIVER; OBVIOUSNESS] ....more

Federal Circuit: Plans for Future Activity Created a Substantial Risk of Future Infringement

Restem filed a petition for inter partes review of U.S. Patent No. 9,803,176, directed to stem cells obtained from umbilical cord tissue and isolated through a two-step process to create a specific cell marker expression...more

PTAB Statistics Through Seven Months of FY2024

The institution rate for post-grant petitions in FY 2024 through the end of April 2024 (the period from Oct. 1, 2023 through April 30, 2024) stands at 66% (427 instituted, 230 denied). This rate remains flat compared to the...more

Reverse Engineered Search Insufficient For IPR/PGR Estoppel

In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its...more

Limited Fintiv Four Stip Unpersuastive

The PTAB considers the six Fintiv factors to determine whether to exercise its discretion to deny institution of an IPR petition in view of a parallel litigation. In that analysis, Fintiv factor four requires the PTAB to...more

Precedential: PTAB Will Rarely Identify MTA Unpatentability Grounds

The PTAB may sua sponte raise unpatentability grounds based upon the prior art of record when reviewing a motion to amend. Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020). It is now clear, however, that the PTAB...more

Fintiv Factors: Institution Considerations In View Of Parallel Proceeding

By creating the new precedential Fintiv factors, the PTAB provides guidance on what it will consider when deciding whether to deny institution of an IPR petition challenging patent claims that are also being litigated in a...more

A Dissenting Opinion On Weighing The Fintiv Factors

The PTAB has explained that it has discretion to deny an IPR petition even if the petitioner has shown that it meets the statutory threshold for institution, which requires “that there is a reasonable likelihood that the...more

Unsupported Expert Opinion Insufficient To Contradict The Prior Art

In Ericsson Inc. v. Intellectual Ventures I LLC, No. 2016-1671, 2018 WL 2407172 (Fed. Cir. 2018), a divided panel of the Federal Circuit reversed a PTAB decision that had sustained the patentability of claim 1 of U.S. Patent...more

It’s Obvious: POSA Could Write Software To Generate Conference Call Requests

A recent PTAB decision underscores the importance of establishing the level of ordinary skill for a successful obviousness challenge. Cisco Sys., Inc. v. Uniloc USA, Inc., IPR2017-00058, Paper 17 (PTAB Apr. 6, 2018). It is...more

The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain

There is no doubt that “the potential for estoppel is one of the important considerations for defendants in deciding whether or not to file an [inter partes review (“IPR”)] petition.” Shaw Indus. Grp., Inc. v. Automated Creel...more

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