Posts filtered by tags: IPR[x]


United States: No Discretionary Denial When Parallel District Court Case Is Currently Stayed - Winston & Strawn LLP

In a case where a parallel district court proceeding between the parties had already been stayed pending resolution of the IPR petition.
Tags: News, United States, IPR, Strawn LLP

United States: Stipulation To Not Pursue In A Parallel Proceeding The Same Grounds Or Any Grounds That Could Have Been Reasonably Raised In An IPR Weighs Strongly In Favor Of Institution - Winston & Strawn LLP

Petitioner had filed a stipulation in a parallel district court proceeding that if the PTAB instituted IPR.
Tags: News, United States, Petitioner, IPR, Strawn LLP

United States: Federal Circuit Affirms PTAB Allowance Of New Evidence On Reply - Winston & Strawn LLP

The Federal Circuit affirmed the PTAB's evidentiary ruling allowing an IPR petitioner to present new evidence of a reference's publication date on reply.
Tags: News, United States, Federal Circuit, IPR, PTAB, Strawn LLP

Day One Project: USPTO Proposals for the Biden Administration

Day One Project is not part of the BIDEN Transition, but the organization has put together a strong group of pro-BIDEN IP experts and relative insiders who have drafted and published a Transition Document for the United States Patent and Trademark Office. The following are a few of the key proposals:  Increase international collaboration during patent examination, including simultaneous examination with IP5 offices. Reorganize our IP engagement with China IP Engagement with a more coherent and ...
Tags: Supreme Court, Law, China, Biden, Patent, PTO, United States Patent and Trademark Office, IPR, Biden Administration, Biden Transition, USPTO Substantive Rulemaking Authority

Federal Circuit Continues to Remain Silent about its R.36 Opinions

Waterblasting, LLC v. Iancu (Fed. Cir. 2021) A few years ago, I wrote an article arguing that 35 U.S.C. § 144 requires the Federal Circuit to issue an opinion when it decides cases on appeal from the USPTO. The … Federal Circuit shall review the decision from which an appeal is taken on the record before the Patent and Trademark Office. Upon its determination the court shall issue to the Director its mandate and opinion , which shall be entered of record in the Patent and Trademark Office and ...
Tags: Law, Uspto, Patent, PTO, Trademark Office, Federal Circuit, IPR, PTAB, Iancu Fed, Federal Circuit Local Rule, Federal Circuit Continues to Remain Silent, Waterblasting LLC, Trademark Office Upon, Waterblasting, Iancu Petition

Conventionality is Irrelevant to Alice Step 1

by Dennis Crouch iLife Technologies, Inc. v. Nintendo of America, Inc. (Fed. Cir. 2021) (Non-Precedential Decision) The Trial: The jury sided with iLife–finding Nintendo liable for infringing iLife’s U.S. Patent No. 6,864,796 and awarding $10 million in damages. At trial, Nintendo had argued that the patent was invalid for lack of enablement and written description, but the jury denied those defenses. Nintendo also challenged the patent in an IPR, but the claims not proven invalid. Here, the c...
Tags: Law, Nintendo, Mario Kart, Patent, Federal Circuit, IPR, Dennis Crouch, Alice Mayo, Alice Step, iLife Technologies Inc, Nintendo of America Inc Fed, Michael Wilson Munck Wilson Mandala, Stephen Smith Cooley

China: Latest Progress In IPR Protection Of China - AFD China

China's top leadership has reiterated the importance of intellectual property rights (IPR) protection in spurring innovation and supporting the country's high-quality development.
Tags: News, China, IPR

IPRally is building a knowledge graph-based search engine for patents

IPRally, a burgeoning startup out of Finland aiming to solve the patent search problem, has raised €2 million in seed funding. Leading the round is by JOIN Capital, and Spintop Ventures, with participation from existing pre-seed backer Icebreaker VC. It brings the total raised by the 2018-founded company to €2.35 million. Co-founded by CEO Sakari Arvela, who has 15 years experience as a patent attorney, IPRally has built a knowledge graph to help machines better understand the technical detai...
Tags: Fundings & Exits, Startups, TC, Europe, Tech, Finland, Machine Learning, Patent, Cto, Patent Law, Abb, IPR, ML, Patent search, Spintop Ventures, IPRally

Moot on Appeal: Patentee’s Infringement Disclaimer Remove’s Challenger’s Ability to Appeal IPR

ABS Global, Inc. v. Cytonome/ST, LLC (Fed. Cir. 2021). In a split opinion, the Federal Circuit has dismissed ABS Global’s appeal of its failed IPR trial — finding the appeal moot. U.S. Patent No. 8,529,161. The simple story here is that Cytonome sued ABS for infringement of the ‘161 patent but lost on summary judgment of non-infringement.  ABS did not pursue an appeal, and expressly “disclaim[ed] such an appeal.” Meanwhile ABS had filed an Inter Partes Review proceeding that resulted in most of ...
Tags: Supreme Court, Law, Patent, Kessler, Board, Abs, Inter Partes Review, Global Inc, Federal Circuit, Prost, IPR, PTAB, Cytonome ST LLC Fed, ABS Global, Cytonome, Federal Circuit Appellant

United States: Pitfalls When Seeking Judicial Review Of IPR Decisions: Alternatives To Appeal (Part 3 Of 3) - Wolf, Greenfield & Sacks, P.C.

Although judicial review of decisions during IPR typically occurs through appeal after the PTAB's Final Written Decision
Tags: News, United States, IPR, PTAB, Wolf Greenfield

Finjan’s Claims in IPR

Palo Alto Networks, Inc. v. Finjan, Inc. (Fed. Cir. 2020) Note – I originally misread this decision as applying the Phillips standard for claim construction. On review, I realize that I misread the decision. The court explains: For petitions for inter partes review filed on or after November 13, 2018, the Board applies the Phillips district court claim construction standard. 37 C.F.R. § 42.100(b) (2018); Phillips v. AWH Corp. , 415 F.3d 1303 (Fed. Cir. 2005) (en banc); Immunex Corp. v. Sanof...
Tags: Supreme Court, Law, US, Palo Alto, Patent, Sas, Fed, Board, Phillips, Sanofi, Federal Circuit, IPR, Palo Alto Networks Inc, Immunex Corp, Finjan, AWH Corp

United States: The Rising Tide Of Discretionary Denial At The Patent Trial And Appeal Board - Wolf, Greenfield & Sacks, P.C.

In the time since the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB), inter partes review (IPR) and other PTAB proceedings for challenging patents' ...
Tags: News, United States, AIA, IPR, Appeal Board PTAB, Wolf Greenfield

Locking in the Rules at the PTO

President Trump’s administrative agencies are working hard to lock-in policy changes before the major shift expected in January.  The Patent Office is no different. The changes here (except those implementing court precedent) are ones that the next administration could change, but the implementation Final Rules and Precedential Decision create administrative hurdles. Final Rules on PTAB Practice: A new set of final rules has now been published and will become effective on January 8, 2021. [Rules...
Tags: Apple, Law, Patent, Apple Inc, Sas, Trump, Board, PTO, Patent Office, Federal Circuit, Petitioner, IPR, iRobot Corp, Uniloc, RPX Corp, Dir Iancu

United States: Federal Circuit Clarifies The "Reasonably Pertintent" Analogous Art Standard - Foley & Lardner

The Federal Circuit vacated and remanded an IPR decision in Donner Technology, LLC v. Pro Stage Gear, LLC, because the PTAB used the wrong standard in evaluating whether a reference was analogous art.
Tags: News, United States, Foley, Federal Circuit, IPR, Lardner, Donner Technology LLC

Briefing begins in US v. Arthrex

US vs. Arthrex, 19-1434 (Supreme Court 2020). Earlier this year the Supreme Court granted writ of certiorari on the PTAB appointments clause issues stemming from the Federal Circuit’s determination that (1) PTAB judges were Officers of the United States who should have been appointed by the President (rather than by the Secretary of Commerce), but (2) the appointments problem was curable by eliminating any statutory job security held by the judges (this reduced them to “inferior officers” who ar...
Tags: Supreme Court, Law, Congress, Senate, Court, US, United States, Commerce, Smith, Patent, Presidential, Board, PTO, Edmond, U S Patent and Trademark Office, Federal Circuit

United States: PTAB Remains Unwilling To Deny Inter Partes Review Based On A Contractual Forum-Selection Clause - Akin Gump Strauss Hauer & Feld LLP

In a recent decision granting institution of an IPR, the PTAB reconfirmed that it will not deny an IPR petition just because the parties previously agreed to resolve their disputes in a different forum.
Tags: News, United States, IPR, PTAB, Gump Strauss Hauer, Feld LLP, Inter Partes

Analogous Art: What is the “Particular Problem”?

Donner Technology, LLC v. Pro Stage Gear, LLC, App. No. 20-1104 (Fed. Cir. 2020) The PTAB sided with the IPR patentee — finding the cited prior art had not been proven “analogous” On appeal, the Federal Circuit has vacated and remanded for lack of substantial evidence to support that conclusion. The Analogous Art Test: Federal Circuit obviousness doctrine begins with prior art as defined by 35 U.S.C. 102, but then limits the scope of potential references with the “analogous art” test.  The test ...
Tags: Law, US, Patent, Fed, Mullen, Board, The Board, Federal Circuit, IPR, Winslow, DONNER, PTAB, KSR, Bigio, Donner Technology LLC, Giles Sutherland Rich

Sanctions for Deleting Pre-Lawsuit Emails

by Dennis Crouch The court issued an important short-opinion, In re Ivantis, Inc. (Fed. Cir. 2020), that should be read and considered as a case-study by in-house counsel. The case involves pre-lawsuit destruction of evidence. The basic setup is that Ivantis has a corporate email-destruction-policy* of deleting emails that are 12-months old.  Glaukos sued Ivantis for infringement in April 2018 and served the defendant with the Summons and Complaint on April 16, 2018. On April 19, 2018 the compa...
Tags: Law, Fda, Patent, Federal Circuit, IPR, FRCP, Glaukos, Dennis Crouch, Ivantis Inc Fed, Ivantis

Federal Circuit: No Appeal of IPR Institution Denial, even If Denied for Extra-Statutory Reasons

by Dennis Crouch In re Cisco Systems Inc. (Fed. Cir. 2020) PTAB denied Cisco’s petitions to institute inter partes review (IPR) against two patents owned by Tel Aviv Univ. (Ramot).  The statute is clear that the decision of whether to institute is not appealable, but Cisco filed for writ of mandamus with the Federal Circuit.   Mandamus has now been denied. The Statute empowers the USPTO Director to decide whether or not to institute an IPR. “The Director shall determine whether to institute ...
Tags: Law, Tel Aviv, Cisco, Patent, Apple Inc, PTO, Federal Circuit, IPR, Dennis Crouch, PTAB, Google LLC, Cisco Systems Inc Fed, Uniloc 2017 LLC, Maxell Ltd, Federal Circuit Mandamus, Parallel District Court Litigation

United States: Reliance On Machine Translations Warrants Denial Of IPR Petitions - Jones Day

An IPR petitioner that relies on foreign language prior art must submit an English language translation of the reference along with an affidavit attesting to the accuracy of the translation.
Tags: News, United States, IPR, Reliance On Machine Translations

Letter to Congress: Iancu is Good for the Patent System

2020-1026-Coalition Ltr re PTAB.FINAL The following letter to Congress appears to have substantial support from patent owners. The basics of the letter is to say that Dir. Iancu’s changes to the IPR process have been positive and should stick.  Part of the issue here is that Dir. Iancu is a political appointee who is on his way out in 2021 if President Trump loses (and would likely leave in 2021 regardless). = = = = Dear Chairman Graham, Ranking Member Feinstein, Chairman Nadler, and Ranking Mem...
Tags: Supreme Court, Law, Congress, United States, Uspto, AIA, Patent, Trump, Lee, Feinstein, Phillips, Patent Trial and Appeal Board, IPR, Cuozzo, Nadler, PTAB

GAO-20-692, Intellectual Property: CBP Has Taken Steps to Combat Counterfeit Goods in Small Packages but Could Streamline Enforcement, September 24, 2020

The European Union (EU) and U.S. approaches to enforcing intellectual property rights (IPR) differ with respect to counterfeit goods in small packages, which are often sent through express carrier...
Tags: CBP, GAO, European Union EU, IPR

Broadest Reasonable Interpretation in Light of the Specification

by Dennis Crouch Although this case comes from an inter partes review, it is one that could be used by patent prosecutors when discussing claim meaning with examiners.  The basic principle here is that the “broadest reasonable interpretation” of a claim must be considered “in light of the specification.”  Here, the claims did not spell-out a sizing limitation for an artificial heart valve, but the size was apparent from the specification.  St. Jude Medical, LLC v. Snyders Heart Valve LLC (Fed. C...
Tags: Minnesota, Law, Patent, Snyder, Federal Circuit, St Jude, IPR, Snyders, Dennis Crouch, PTAB, Leonhardt, Bessler, St Jude Medical LLC, Snyders Heart Valve LLC Fed

Certiorari granted in Arthrex

by Dennis Crouch The Supreme Court has granted Certiorari in Arthrex on the questions of whether Administrative Patent Judges (APJs) were properly appointed under the U.S. Constitution and, if not, what is the proper remedy. None of the appellants were satisfied with the Federal Circuit’s decision in the case and each petitioned for Supreme Court review. Subsequently, the U.S. Gov’t filed a memorandum walking through what it saw as the three unifying questions presented in the case. The court ha...
Tags: Supreme Court, Law, Congress, Senate, Court, Patent, Moore, Hughes, Chen, O'Malley, U S Patent and Trademark Office, Reyna, Federal Circuit, Stoll, Prost, IPR

United States: IPR And CBM Statistics For Final Written Decisions Issued In June 2020 - Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

The Patent Trial and Appeal Board issued 28 IPR and CBM Final Written Decisions in June, including decisions following remands from the Federal Circuit, cancelling 234 (72.67%) ...
Tags: News, United States, Federal Circuit, IPR, Appeal Board, Finnegan Henderson Farabow Garrett, Dunner LLP

Relist Watch: Worst Monday in October

John Elwood reviews the relists from the “long conference” … barely. The Supreme Court began October 2020 with black crepe still draped over an empty bench as, for only the second time in its history, it began a sitting of remote telephonic arguments. But though they were down a member and working remotely, the justices went efficiently about their business, relisting 15 cases involving a host of issues. Because the press of business is especially pressing just now, this week we’ll once again be...
Tags: Florida, Featured, Mississippi, Supreme Court, Law, Congress, Mexico, Senate, United States, Idaho, National Football League, Illinois, Naacp, Department Of Homeland Security, Farmer, Taylor

This week at the Supreme Court

by Dennis Crouch Oral Argument set for October 7, 2020 in Google v. Oracle.  (1) Whether copyright protection extends to software code and the organizational structure of a programming language; and (2) Whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use. What is the role of the Jury in deciding fair use? (Raised by the Court) What is the role of patents in the protection of a software code? (Raised by C...
Tags: Google, Supreme Court, Law, United States, Oracle, Patent, Dish Network Corporation, Thomas, PTO, LLC, TASER International Inc, United States Patent and Trademark Office, IPR, BioDelivery Sciences International Inc, Kingston Technology Company Inc, Dennis Crouch

United States: N.D. Ill.: Neither Statutory Estoppel Nor "Misleading" Statements Regarding Its Scope Sufficient To Knock Out Invalidity Defenses - Akin Gump Strauss Hauer & Feld LLP

A district court has ruled that the scope of IPR estoppel under 35 U.S.C. § 315(e)(2) did not apply to invalidity grounds...
Tags: News, United States, IPR, Gump Strauss Hauer, Feld LLP

United States: PTAB Joinder Provides Estoppel Benefit - Ropes & Gray LLP

Court's have struggled with the meaning of the "reasonably could have raised" aspect of 315(e)(2) IPR estoppel.
Tags: News, United States, IPR, Gray LLP

Supreme Court Patent Law 2020: Long Conference Preview

by Dennis Crouch While the country is still mourning the loss of Justice Ruth Bader Ginsburg and arguing over her replacement, the Supreme Court itself is set to begin its October 2020 term this week.  One of the first orders-of-business will be the Long Conference set for September 29, 2020. At that first conference of the term, the court is set to consider the pile of certiorari briefing completed over the summer. There are a few key patent cases in the pile: Constitutional challenge to Admi...
Tags: Facebook, Supreme Court, Law, US, United States, Ruth Bader Ginsburg, Patent, Thomas, Van Buren, PTO, United States Patent and Trademark Office, IPR, BioDelivery Sciences International Inc, Kingston Technology Company Inc, Dennis Crouch, Oracle America Inc