News & Analysis as of

Patent Trial and Appeal Board Patent Infringement Litigation Strategies

Vinson & Elkins LLP

File Early or Risk Denial: iRhythm IPR Institution Denial Underscores the Importance of Filing IPR Petitions Sooner Rather Than...

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On June 6, 2025, the Acting Director of the United States Patent and Trademark Office (“USPTO”), Coke Morgan Stewart, issued a decision denying institution of five inter partes review (“IPR”) petitions filed by iRhythm, Inc....more

Jones Day

Applying Fintiv to a Parallel ITC Investigation

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The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more

Akin Gump Strauss Hauer & Feld LLP

Stipulated Motion to Stay Denied Until All Defendants Agree to be Bound by IPR Estoppel

In a patent infringement litigation in the U.S. District Court for the Eastern District of Texas, Judge Rodney Gilstrap denied a joint motion to stay the litigation pending resolution of inter partes review when it was...more

Jones Day

Trial Date Drives PTAB’s Denial of IPR Institution

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On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell...more

Jones Day

PTAB Denies Institution of IPRs in Apple v. Haptic

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In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These...more

American Conference Institute (ACI)

[Event] 17th Annual Practitioners' Think Tank on ITC Litigation & Enforcement - March 31st - April 1st, Washington, DC

Examine real-world strategies for tackling the most pressing challenges in ITC practice at ACI’s 17th Annual Practitioners' Think Tank on ITC Litigation & Enforcement. Be in the same room with leading in-house counsel,...more

Akin Gump Strauss Hauer & Feld LLP

Shared Counsel and Existence of Joint Defense Agreement Insufficient to Establish Real Party-In-Interest Status

The Patent Trial and Appeal Board rejected a patent owner’s assertion that petitioner should have named a third party, which was a defendant in a related district court patent infringement litigation and a party to a joint...more

Jones Day

Don’t Wait To Seek Discovery Or It May Be Too Late

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“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

American Conference Institute (ACI)

[Event] 22nd Advanced Summit on Life Sciences - May 29th - 30th, New York, NY

Hosted by American Conference Institute, the 22nd Advanced Summit on Life Sciences Patents returns for another exciting year with curated programming that will provide practical insights on how to maximize your patent term...more

American Conference Institute (ACI)

[Event] 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement - May 29th - 30th, Washington, DC

Returning to Washington in May, ACI’s 16th Annual Practitioners’ Think Tank on ITC Litigation & Enforcement is your opportunity to learn from and network with key members of the ITC Bench, senior ITC Attorneys and leading...more

Fish & Richardson

The Top Three Things Foreign Companies Should Keep in Mind When Considering IPR

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Being sued for patent infringement in the U.S. can be confusing, especially for foreign companies with limited litigation experience. Even more confusing are the multiple options and venues available for responding to patent...more

American Conference Institute (ACI)

[Event] 20th Paragraph IV Disputes - April 25th - 26th, New York, NY

Hosted by American Conference Institute, the 20th Annual Paragraph IV Disputes & the 40th Anniversary of the Hatch-Waxman Act returns for another exciting year with curated programming that will take a retrospective look at...more

Wolf, Greenfield & Sacks, P.C.

[Hybrid Event] Damage Control: Mitigating ITC Remedial Orders with Effective Redesign and Parallel Litigation Strategies -...

Join litigation shareholder Libbie DiMarco as she breaks down the latest developments for mitigating ITC remedial orders with effective litigation strategies ranging from product redesigns (and when to introduce them) to PTAB...more

Jones Day

Federal Circuit Confirms PTAB Standard of Review

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The Federal Circuit in Sisvel International S.A. v. Sierra Wireless, Inc. (Fed. Cir. Sept. 1, 2023) (Prost, Reyna, and Stark) affirmed a PTAB decision finding anticipated and/or obvious certain claims of two patents directed...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

American Conference Institute (ACI)

[Event] 13th Summit on Biosimilars & Innovator Biologics - June 28th - 29th, Boston, MA

This June, join the “who’s who” of the biosimilars and innovator biologics industries as they gather in Boston for ACI’s 13th Annual Summit on Biosimilars & Innovator Biologics....more

American Conference Institute (ACI)

[Event] 17th Annual Paragraph IV Disputes Conference - April 26th - 27th, New York City, NY

Premier forum which shapes the law, policy, and proceedings of Paragraph IV Litigation is back to New York City on April 26-27! Pharmaceutical patent practitioners from across the globe attend this flagship conference to...more

Jones Day

Prior Art Wanted—Cash Reward

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Recently, Cloudflare Inc. succeeded in convincing the PTAB to institute in IPR2021-00969 against a Sable Network, Inc.’s patent directed toward data flow. While the institution itself is not out of the ordinary—the...more

Jones Day

Deposition Exhibits Allowed With Sur-Replies (Sometimes)

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Under the Board’s rules, a patent owner gets to have the last word in a PTAB proceeding by filing a sur-reply to the petitioner’s reply.  Sur-replies may only respond to arguments raised in the reply, and the “sur-reply … may...more

Jones Day

Late Request Results In Denial Of Motion To Strike Authorization

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Patent Owner (Provisur Technologies) requested authorization to file a motion to strike portions of Petitioner’s (Weber, Inc.) Reply and certain evidence submitted therewith, which Petitioner opposed.  Patent Owner argued...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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2020 #1

PATENT CASE OF THE WEEK - Uniloc 2017 LLC v. Apple, Inc., Appeal Nos. 2019-1922, -1923, -1925, -1926 (Fed. Cir. July 9, 2020) - This week’s case of the week focuses, not on a patent issue, but on a procedural issue common...more

Sunstein LLP

Court’s Strict Interpretation of Timing Requirement May Force Patent Validity Challenges in Two Forums

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The America Invents Act (“AIA”), signed into law in 2011, introduced inter partes review (“IPR”), which allows parties to challenge the validity of patent claims in proceedings before the Patent Trial and Appeal Board...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.

2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more

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