News & Analysis as of

Patent Infringement Inter Partes Review (IPR) Proceeding America Invents Act

Baker Botts L.L.P.

Ex Parte Reexaminations Poised to Make a Quiet Comeback: Discretionary Denial Guidance for Inter Partes Reexamination May Increase...

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Imagine this. You were just served with a Complaint for patent infringement and learn that, some years ago, your competitor was granted a patent giving them a legal monopoly to exclude others, including you, from making,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

Jones Day

PTAB AIA FY2024 Roundup: Key Insights and Statistics

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The U.S. Patent and Trademark Office (USPTO) recently released its Fiscal Year 2024 roundup for the Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) proceedings. This comprehensive report provides valuable...more

Pillsbury Winthrop Shaw Pittman LLP

Navigating the PREVAIL Act: Key Impacts on Litigants as It Advances in the Senate

The PREVAIL Act is now subject to debate before the full Senate. The Act will require petitioners to certify standing, two new categories of which were recently added via a manager’s amendment....more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - December 2024 #2

DDR Holdings, LLC v. Priceline.com LLC, Appeal Nos. 2023-1176, -1177 (Fed. Cir. Dec. 9, 2024) In our Case of the Week, the Federal Circuit affirmed a stipulated non-infringement judgment from Delaware’s district court,...more

WilmerHale

Federal Circuit Patent Watch: Ordering In-Person Appearance to Testify Regarding Potential Fraud on the Court is within Court's...

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Precedential and Key Federal Circuit Opinions - 1.  BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more

Jones Day

USPTO Proposes Expanding Opportunities for Non-Registered Practitioners

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The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the Office. ...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: Federal Circuit Cases Exploring a Year of Rules, Rulemaking, and Rule Enforcement at...

A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more

Erise IP

Eye on IPRs, January 2024: Intel Damages Go to Retrial after PTAB Win, Pushback on IPR Changes, and More

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Every month, Erise’s patent attorneys review the latest inter partes review cases and news to bring you the stories that you should know about: After IPR victory, Intel wins appeal on $2.2 billion patent award - Bloomberg...more

Jones Day

Penumbra Illuminates Priority Dates Pre and Post-AIA

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USPTO Director Kathi Vidal recently designated precedential section II.E.3 of Penumbra, Inc. v. RapidPulse, Inc. and clarified that the priority analysis for an AIA reference patent as prior art is different than for a...more

Jones Day

RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

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On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review of...more

Farella Braun + Martel LLP

What Patent Bills Would Mean for Infringement Litigation

Two bills recently introduced in Congress could significantly affect the current patent litigation landscape. The bipartisan bills are titled the Patent Eligibility Restoration Act of 2023 and the Promoting and Respecting...more

Jones Day

Legislation: Will the Post-Grant Procedures Established by the AIA PREVAIL?

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The Senate recently introduced a bill directed to substantially narrowing the scope of post grant proceedings, including Inter Partes Reviews (“IPRs”), before the Patent Trial and Appeal Board (“PTAB”). First introduced by a...more

Jones Day

PTAB Clarifies Claim Preclusion Standards

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On June 2, 2023,the PTAB held the standard enunciated in Astoria Federal Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) applies to claim preclusion determinations. This was yet another decision in the ongoing battle...more

Knobbe Martens

AIA Patents May Not Be Challenged in Interference Proceedings

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SNIPR Technologies Ltd v. Rockefeller University - Before Chen, Wallach, and Hughes. Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board. Summary: Patents whose priority is governed...more

Jones Day

USPTO Requests Comments Regarding Motion to Amend Pilot

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The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - May 2023 #3

Medtronic, Inc. et al. v. Teleflex Innovations S.A.R.L., Appeal Nos. 2021-2356, -2358, -2361, -2363, and -2365 (Fed. Cir. May 24, 2023) In this week’s Case of the Week, a split panel of the Federal Circuit considered...more

Jones Day

A Petitioner’s Guide: Navigating Uncertainty on PGR Eligibility

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Samsung Electronics Co. (“Samsung”) recently faced the issue of determining whether U.S. Patent No. 11,163,823 (“the ‘823 patent”) is a pre- or post-AIA patent. Hedging its bets, Samsung concurrently filed two petitions—one...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Jones Day

OpenSky – Director Finds Abuse Of Process

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In OpenSky Industries, LLC v. VLSI Technology LLC, Under Secretary of Commerce for Intellectual Property, Katherine Vidal, issued a precedential decision regarding OpenSky’s violation of the Director’s express order and...more

Wilson Sonsini Goodrich & Rosati

The PTAB Review - October 2022

This issue of The PTAB Review begins with a brief update about the U.S. Patent & Trademark Office (USPTO) Guidelines for when institution of an America Invents Act (AIA) trial (e.g., inter partes review or post-grant review)...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2022 #3

Polaris Innovations Ltd. v. Brent, Appeal No. 2019-1483 (Fed. Cir. Sept. 15, 2022) - In our Case of the Week, the Federal Circuit provided what appears to be its first precedential opinion construing Section 317 of the...more

McDonnell Boehnen Hulbert & Berghoff LLP

Click-to-Call Technologies LP v. Ingenio, Inc. (Fed. Cir. 2022)

For most of the past decade, the Supreme Court has been marking out the metes and bounds of the Patent Trial and Appeal Board's execution of the post-grant review provisions of the Leahy-Smith America Invents Act,...more

Jones Day

Interim Procedure for Discretionary Denials Established

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On June 21, USPTO Director Kathi Vidal issued a memorandum concerning the PTAB’s practice of determining whether to institute an AIA post-grant proceeding in view of the Fintiv factors. The memorandum is in part a result of...more

Jones Day

Legislation: PTAB Reform Act of 2022 (UPDATED)

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Since the passage of the America Invents Act in 2012, both petitioners and patent owners have expressed concerns regarding the procedures and practices of the Patent Trial and Appeal Board (PTAB). In an effort to respond to...more

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