News & Analysis as of

Patent Infringement Parallel Proceedings Inter Partes Review (IPR) Proceeding

Jones Day

Acting Director Reverses Previous Discretionary Denial

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For the first time under the bifurcated institution procedures, the Acting Director reversed her own prior discretionary denial, citing changed circumstances based on a settlement in the parallel district court litigation. ...more

Jones Day

Institution Denied Based on Parallel Proceeding and Prior Denial

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On December 6, 2024, Comcast Cable Communications, LLC (“Comcast”) filed three separate petitions for inter partes review (“IPR”) of U.S. Patent No. 9,866,438 (“the ’438 Patent”), which is assigned to Entropic Communications,...more

McDermott Will & Schulte

No Attorneys’ Fees Available for Successful IPR in Parallel Court Proceedings

The US Court of Appeals for the Federal Circuit concluded that a party that voluntarily elects to pursue parallel proceedings before the Patent Trial & Appeal Board and the district court is not entitled to recover attorneys’...more

Erise IP

Eye on IPRs, May 2024: Lululemon Earns Partial IPR Win Against Nike; USPTO Issues Proposed IPR Rules

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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: PTAB issues initial decisions on Lululemon-Nike IPRs - Lululemon, whose...more

Erise IP

Eye on IPRs, February 2024: Supreme Court Passes on Fintiv Challenge, Parallel IPR/District Court Litigation, First Precedential...

Erise IP on

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: SCOTUS Won’t Hear Challenge to PTAB’s Fintiv Rule- The U.S. Supreme...more

American Conference Institute (ACI)

[Event] 18th Annual Paragraph IV Disputes - April 19th - 20th, New York, NY

Hosted by ACI, 18th Annual Paragraph IV Disputes Conference returns to New York City for another exciting year with curated programming that not only addresses the hot topics, but also puts them within the context of pre-suit...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

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

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Mylan Labs. Ltd v. Janssen Pharmaceutica, N.V.,...

Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Jones Day

Some Conditions May Apply – Fintiv Factor 4 Analysis

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In a recent decision, the Patent Trial and Appeal Board granted institution of inter partes review after accepting the Petitioner Microsoft’s stipulation to forego overlapping challenges in parallel district court proceedings...more

American Conference Institute (ACI)

[Event] Paragraph IV Disputes Conference - November 9th - 10th, New York, NY

Join the conference that the “who’s who” of Hatch-Waxman litigators have designated as the forum which sets the standards for Paragraph IV practice. ACI’s Paragraph IV Litigation Conference is returning LIVE & IN-PERSON to...more

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

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for...more

Akin Gump Strauss Hauer & Feld LLP

Timing is Everything: Accused Infringer’s IPR Victory Estops Its Own Prior Art Invalidity Defenses, but Does Not Estop Plaintiff...

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

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

PTAB Strategies and Insights - May 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Goodwin

Issue 33: PTAB Trial Tracker

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QUESTIONS REGARDING THE APPLICATION OF THE FINTIV FACTORS REMAIN - The Board has increasingly exercised its discretion to deny petitions in recent months, mainly due to the application of the Fintiv factors due to parallel...more

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

PTAB Strategies and Insights - January 2021: Petitioner's District Court Stipulation Results in PTAB Trial Institution Under the...

In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation), where the Board instituted trial, i.e., did not exercise its...more

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

PTAB Strategies and Insights - January 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Rothwell, Figg, Ernst & Manbeck, P.C.

ABS Global v. Cytonome/St, LLC: Mootness and Preserving the Argument for Vacatur

In 2017, Cytonome filed suit in the Western District of Wisconsin (“the District Court”), accusing ABS of infringing six of its patents, including US Patent No. 8,529,161 (“the ’161 patent”). Subsequently, in October 2017,...more

Womble Bond Dickinson

Proposed Alternative PTAB Discretionary Denial Factors In View of Co-Pending Parallel Litigation

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The authors propose replacing the PTAB’s current NHK-Fintiv factors with the alternative “Babcock-Train Factors” set forth herein These alternative factors have been crafted in an effort to provide clearer institution...more

Goodwin

The PTAB Trial Tracker

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The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Jones Day

A Dissenting Opinion On Weighing The Fintiv Factors

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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

Mintz - Intellectual Property Viewpoints

Better Early Than Never: PTAB Confirms Willingness to Deny Institution In Light of Advanced State of Parallel Litigation

The Patent Trial and Appeal Board (“PTAB”) recently sent a warning to alleged infringers not to wait for the one year deadline to file IPR petitions, or risk discretionary denial. On May 13, 2020, the PTAB exercised its...more

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

2019 PTAB Year in Review: Analysis & Trends: Success of Motions to Stay Rising, But Why?

Defendants sued for patent infringement in district court commonly seek litigation stays based on an American Invents Act (AIA)-contested proceeding that assesses the validity of the patents-in-suit before the Patent Trial...more

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

PTAB Strategies and Insights - May 2019: Board Immediately Distinguishes Precedential NHK Decision in Amazon Institution Decision

Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues...more

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