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October 11, 2018
                Petitioner should discuss the prosecution history of all relevant related patents when arguing that an issue was not previously considered by the Office The Board has discretion to deny institution of an inter partes review under 35 U.S.C. 325(d) when “the same or substantially the same prior...
August 02, 2018
In Ticketnetwork, Inc. v. Ceats, LLC, CBM2018-00004 (PTAB 2018) (Final Written Decision), the Patent Trial and Appeal Board (“the Board”) held that Ticketnetwork failed to establish standing under 37 C.F.R. § 42.302, and accordingly did not institute a covered business method (“CBM”) review of U.S. Patent No. 8,229,774 (the “’744 Patent”). In 2010, Ceats sued Ticketmaster...
June 28, 2018
In Campbell Soup Company, et al. v. Gamon Plus, Inc., IPR2017-00087, Paper 75 (PTAB 2018) (Final Written Decision), the Patent Trial and Appeal Board (“PTAB”) found that “an appreciable amount of Campbell’s increased commercial success of soup” was attributable to Gamon’s product covered by the claims and, thus, found claim 27 of U.S. Patent 8,827,111...
May 24, 2018
  OBJECTIVE EVIDENCE OF NON-OBVIOUSNESS OUTWEIGHS WEAK MOTIVATION TO COMBINE Author: Hui Wauters In Fox Factory Holding Corp. v. SRAM, LLC, Case No. IPR2016-01876 (April 2, 2018), the Patent Trial and Appeal Board (PTAB) found that Patent Owner’s extremely strong overall showing of objective indicia of non-obviousness overcomes Petitioner’s, at best, weak motivation to combine...
May 09, 2018
In Cisco Systems v. Hewlett Packard Enterprise Company, IPR2017-01933, Paper 9 (PTAB 2018) (Decision Denying Institution of Review), the Patent Trial and Appeal Board (“the Board”) held that a merger between Cisco and another company called Springboard that was completed after Cisco filed a petition for inter partes review (IPR) created a real party in...
April 23, 2018
Becton,  Dickinson and Co. v. B. Braun Melsungen AG, IPR2017-01586, Paper 8 (PTAB Dec. 15, 2017) (Decision, Institution of Inter Partes Review) (Informative). Kayak Software Corp. v. IBM Corp., CBM2016-00075, Paper 16 (PTAB Dec. 15, 2016) (Decision, Declining to Institute Covered Business Method Patent Review) (Informational). In two decisions, designated as informative on March 21,...
April 03, 2018
Claim Validity Upheld Based on Showing of Lack of Motivation to Combine References Author: James A. Gromada In Resmed Limited et al. v. Fisher & Paykel Healthcare Limited, Case No. IPR2016-01724, the Patent Trial and Appeal Board (PTAB) was presented with a question as to whether several claims of U.S. Patent No. 8,453,641 B2 (hereinafter...
March 14, 2018
On February 23, 2018, the Patent Trial and Appeal Board (PTAB) issued two decisions regarding an inter partes review (IPR) of patents covering Allergan’s Restasis© (Cyclosporine ophthalmic emulsion) filed by Akorn Pharmaceuticals, Mylan Pharmaceuticals, and Teva Pharmaceuticals.  The first opinion denied the Saint Regis Mohawk Tribe’s Motion to Terminate the Proceedings, while the second denied...
March 09, 2018
Sughrue is pleased to announce the publication of THE ESSENTIAL CASE LAW GUIDE TO PTAB TRIALS, collectively authored by Sughrue partners and associates.  The Guide is the first comprehensive text on decisions of the U.S. Patent Office regarding the newest form of administrative law practice before that agency.  Through analysis and summary of the PTAB’s...
January 10, 2018
Wi-Fi One, LLC v. Broadcom Corp. (Fed. Cir. 2018) By David Emery In an en banc decision, the Federal Circuit reigned in the scope of 35 U.S.C. § 314(d) by deciding that time-bar determinations under  § 315(b) are appealable.  While § 314(d) states that a determination whether to institute is nonappealable, the Court limited this prohibition...
November 30, 2017
On November 27, 2017, the Supreme Court Justices posed many interesting questions to attorneys representing the parties involved in two underlying Inter Partes Reviews (IPRs) and the federal respondents in these two cases, which will impact the future of IPRs significantly.  Of the two cases, Oil States Energy Services v. Greene’s Energy Group (16-612) has...
October 25, 2017
General Plastic Industrial Co., Ltd. v. Canon Kabushiki Kaisha. (IPR2016-01357 through IPR2016-01361; “Decision”) In an expanded panel where General Plastics sought reversal of multiple decisions that denied instituting follow-on petitions, the PTAB confirmed these decisions were proper based on the factors established in NVIDIA.  This decision has been added to the PTAB’s list of precedential...
October 10, 2017
In Aqua Products, Inc., v. Matal, 2015-1177, Oct. 4, 2017, the en banc Federal Circuit cut against the grain of current PTAB proceeding and held that the petitioner in an inter partes review proceeding has the burden to prove unpatentability for amended claims. The patent owner in a patent office trial may file one motion...
September 01, 2017
Nidec Motor Corporation v. Zhongshan Broad Ocean Motor Co., Ltd. (Federal Circuit 2016-232, August 22, 2017) By David Emery In a concurring opinion by Judge Timothy Dyk (joined by Judge Wallach), Judge Dyk expressed that there are “serious questions as to the Board’s (and Director’s) interpretation of the relevant statutes and current practices” when expanding...
July 05, 2017
Federal Circuit No. 2016-1599 (Fed. Cir. May 11, 2017) In Aylus Networks, Inc. v. Apple Inc. (Fed. Cir. No. 2016-1599, May 11, 2017), the Federal Circuit held that statements made by a patent owner during an IPR proceeding, whether before or after an institution decision, can be considered for claim construction and relied upon to...
June 15, 2017
On June 12, 2017, the Supreme Court granted certiorari to review whether the America Invents Act’s provisions on inter partes review (IPR) violate the Seventh Amendment right to jury by extinguishing patent claims through a non-Article III court. Oil States Energy Services LLC v. Greene’s Energy Group LLC.1 The USPTO’s authority to decide IPRs does...
April 18, 2017
The Patent Trial and Appeal Board recently denied Cover Business Method (CBM) review of an Internet advertising display patent assigned to KlausTech. The petitioner, Google, argued that the claim limitation “retaining … a record of the browser identity” should be construed as financial in nature because the specification describes determining compensation for publisher websites and...
4/11/2017
미국에서 특허 침해의 의심을 받는 당사자가 이를 다툴 수 있는 방법에는 크게 두 가지가 있습니다. 하나는 연방법원에서 해당 특허가 무효이기 때문에 효력이 없다고 주장하거나 설령 특허가 유효하다고 할지라도 그 특허에 대한 침해행위를 하지 않았음을 입증하는 것이고, 또 한 가지는 특허청의 심판기관인 PTAB(Patent Trial and Appeal Board)에서 Inter Partes Review(IPR)를 통해...
4/4/2017
연 평균 약 80건의 상고사건을 심리하는 미국 연방대법원(이하 “대법원”)이 2주 연속 특허관련 사건의 Oral Hearing을 하는 것은 아주 드물다고 볼 수 있습니다.  그런데 대법원은 3월 21일에 있었던 특허소진(特許消盡: Patent Exhaustion)에 관한 Lexmark v. Impression 케이스에 이어, 지난 주 월요일(3월 27일)에 미국특허소송에 커다란 파급력을 지닌 또 다른 사건의 Oral Hearing을 열었습니다. ...
January 27, 2017
In Garmin Int’l, Inc. v. Cuozzo Speed Tech. LLC, IPR2012-00001, (PTAB March 5, 2013), the Board set forth five factors—commonly referred to as the Garmin factors—for determining whether “additional discovery” will be granted to a party during a proceeding before the Board, such as an inter partes review (IPR) covered business method review (CBM) or...
October 06, 2016
It was known that the Patent Trial and Appeal Board (“PTAB”) rarely grants a patent owner’s motion to amend claims during inter partes review (IPR) proceedings, and there is no exception in an IPR proceeding involving Veritas Technologies LLC and Veeam Software Corporation (No. IPR2014-00090).  In view of the PTAB’s recent denial, Veritas appealed to...
September 26, 2016
When a particular patent is involved in an inter partes review (IPR) proceeding or other post-grant review proceeding, the USPTO has wide discretion in determining whether to allow an additional proceeding to be instituted or continued.  The two governing statutes are 35 U.S.C. §315(d) and 35 U.S.C. §325(d), each of which states that “the Director...
September 02, 2016
On June 13, 2016, the Patent Trial and Appeal Board (PTAB) entered its first Final Written Decision in a Post Grant Review (PGR) proceeding. The PTAB found that the Petitioner had failed to show unpatentability based on prior art, but the PTAB agreed with the Petitioner that all claims are directed to unpatentable abstract ideas...
August 02, 2016
The Patent Trial and Appeal Board (“the PTAB”) has a staunch reputation for rarely granting a patent owner’s motion to amend claims during inter partes review proceedings (to date, the Board has only granted six such motions to amend).  However, in the matter of Shinn Fu Co. v. Tire Hanger Corp., IPR2015-00208 (decided on April...
July 13, 2016
The America Invents Act (AIA) provided several mechanisms for reviewing the validity of issued patents.  While Inter Partes Review (“IPR”) is commonly used, a review of Covered Business Method  (“CBM”) patents is another mechanism for reviewing validity.  Moreover, challenging a patent using CBM can be more desirable than in an IPR, since CBM provides the...
June 23, 2016
On June 20, 2016, the Supreme Court issued its ruling in Cuozzo Speed Technologies, LLC v. Lee.  There were two issues presented in Cuozzo: (1) whether the Board’s institution decision of an IPR is appealable, and (2) whether the broadest reasonable construction standard is appropriate to apply in patent office proceedings.  For both of these...
June 07, 2016
The outcomes of inter partes review petitions and final written decisions have differed dramatically for claims in pharmaceutical patents, compared to other technologies, particularly for obviousness challenges of claims to chemical compounds.  In its final written decisions of Orange Book-listed patents, the Patent Trial and Appeal Board (“PTAB”) has found claims unpatentable 35% of the time, in...
May 17, 2016
In Blackberry Corp. v. Zipit Wireless, Inc., IPR2014-01506, the Patent Trial and Appeal Board found that testimony of the Patent Owner’s declarant was owed diminished weight due to misstatements in the declarant’s Curriculum Vitae (“CV”).  However, despite the reduced weight, the Board nevertheless found that the Patent Owner had a winning claim construction argument as...
May 05, 2016
Novelty and obviousness are governed by 35 U.S.C. §§ 102 and 103, respectively. Generally speaking, a novel claim is one that has not been previously described or practiced. Similarly, a claim is non-obvious if the claim, as a whole, would not have been obvious to one of ordinary skill before the effective filing of the...
April 22, 2016
The Patent Trial and Appeal Board (PTAB) may deny institution of inter partes review (IPR) of claims of a patent if the Petition for IPR repeats the same issues made during prosecution of the patent, even if the Petition uses a prior art reference cited during prosecution to reject only other claims of the patent...
April 13, 2016
On April 1, 2016, the USPTO published final amendments to the Rules of Practice for PTAB AIA trials.  The amendments are effective May 2, 2016, and apply to all AIA petitions, whether they were filed...
March 29, 2016
In J.P. Morgan Chase v. Intellectual Ventures (CBM2014-00157), the PTAB held that a patent owner cannot remove the standing of a petitioner in a covered business method (CBM) patent review, and therefore halt the CBM...
February 24, 2016
In PPC Broadband Inc. v. Corning Optical Commc’ns, Docket No. 2015-1364 (Fec. Cir. 2016), the Federal Circuit strongly relied on the intrinsic evidence of the specification to limit the Patent and Trial Appeal Board’s broadest...
February 19, 2016
On November 5, 2015, the United States Court of Appeals for the Federal Circuit (CAFC) handed down its decision in Belden Inc. v. Berk-Tek LLC regarding an appeal of the decision of the U.S. Patent...
January 29, 2016
John M. Bird is a partner in the Washington, DC Office of Sughrue Mion PLLC. His focus is on the ‎protection and enforcement of designs and a wide range of electrical and mechanical technologies, ‎including...
December 08, 2015
The Patent Trial and Appeal Board (PTAB) has issued two written decisions in which the admissibility of draft expert declarations was at issue. On July 27, 2015, the PTAB entered its final written decision in...
November 17, 2015
The Federal Circuit (Judge Lourie, Chief Judge Prost, Judge Linn) in Achates Reference Publishing, Inc. v. Apple Inc. (2014-1767, September 30, 2015), held that it did not have jurisdiction to review a Patent Trial and...
October 22, 2015
Attorneys from Sughrue Mion and other international law firms recently participated in the annual Symposium for Managing Pharmaceutical, Biotechnology and Chemical Patent Portfolios, hosted by the Institute of Intellectual Property Research and Development.  As a...
October 15, 2015
In Edmund Optics, Inc. v. Semrock, Inc. the PTAB addressed whether a petitioner, who did not put on evidence or arguments showing that the prior art enables the claimed invention in its petition, may do...
September 30, 2015
Dynamic Drinkware, is an appeal from a final written decision by the Patent Trial and Appeal Board (“PTAB”) in IPR2013-00131 (“the ’131 IPR”).  See Dynamic Drinkware LLC v. National Graphics, Inc., IPR2013-00131, Paper No. 42...
September 16, 2015
Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00356, Paper 51 (July 30, 2015) Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00366, Paper 45 (July 30, 2015) Qualtrics, LLC v. OpinionLab, Inc., IPR2014-00406, Paper 44 (July 24, 2015) Qualtrics, LLC...
September 03, 2015
  Under 35 U.S.C. § 315(b), an inter partes review petition will not be instituted “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real...
July 23, 2015
    SDI Technologies, Inc. filed inter partes review (IPR) of claims 25, 26, 51-53, 55-62, 75, and 76 of U.S. Patent Nos. 8,364,295 (IPR2014-00346).  U.S. Patent No. 8,364,295 (“the ‘295 patent”) is owned by...
July 07, 2015
Claim Construction In the first reversal of a Final Decision by the Patent Trial and Appeal Board (PTAB), the Federal Circuit reversed the PTAB’s construction of several claim limitations and remanded the PTAB’s determination of...
June 12, 2015
Dell, Inc. v. Electronics and Telecommunications Research, IPR2015-00549 (Patent Tr. & App. Bd. 2015) In a recent inter partes review (IPR) decision, Dell, Inc., et al. v. Electronics and Telecommunications Research, (IPR2015-00549, Paper No. 10,...
June 04, 2015
In a covered business method review proceeding the PTAB canceled all 23 claims of U.S. Patent No. 7,603,392 (“the ’382 patent”) as directed to ineligible subject matter under 35 U.S.C. § 101.  Bank of America,...
May 27, 2015
As noted in our post of April 23, 2015, in Intri–Plex Technologies, Inc. and Mmi Holdings, Ltd., v. Saint–Gobain Performance Plastics Rencol Limited, IPR2014–00309 (Paper 83), the Board relied on Applicant’s Admitted Prior Art in...
May 18, 2015
  In the Final Written Decision Medtronic, Inc. et al. v. Lifeport Sciences LLC., IPR2014-00288 (Paper 34, April 21, 2015), the Patent Trial and Appeal PTAB (PTAB) reversed its position and determined that the claims...
May 07, 2015
On April 29, 2015, the Judiciary Committee of the Senate introduced an anti-patent troll bill (Protecting American Talent and ENTrepreneurship Act — or PATENT Act — S.1137).  The Senate bill is very different from a...
April 23, 2015
Under 35 U.S.C. § 311(b), “[a] petitioner in an inter partes review may request to cancel as unpatentable 1 or more claims of a patent only on a ground that could be raised under section...
April 16, 2015
In its Inter Partes Review Final Written Decision, the Patent Trial and Appeals Board (PTAB) found that Petitioner had shown by a preponderance of the evidence that method claims 16 and 17 of U.S. Patent...
April 08, 2015
The PTAB recently denied institution of inter partes review of two related petitions – Galderma S.A. v. Allergan Industrie, IPR 2014-01422 (“the 422 IPR”) and Galderma S.A. v. Allergan Industrie, IPR 2014-01417 (“the 417 IPR”),...
March 31, 2015
    Inter Partes Review (“IPR”) continues to serve as a cost-effective vehicle for invalidating patents at the USPTO’s Patent Trial and Appeal Board’s (“PTAB”).  As one recent example, Fellowes, Inc. (“Fellowes”) sued paper shredder...
March 27, 2015
In Facebook v. Software Rights Archive, three online service companies challenged two Software Rights’ patents –5,832,494 (“the ʼ494 patent) and 6,233,571 (“the ʼ571 patent”) – in three separate Inter Partes Reviews (IPR).  (IPR2013-001479, 00480, and 00481)....
March 19, 2015
In a recent Inter Partes Review (IPR) proceeding before the Patent Trial and Appeal Board (the Board), Cardiocom, LLC (Cardiocom) successfully invalidated all 37 challenged claims of U.S. Patent No. 7,516,192 B2 (the ‘192 patent)...
March 11, 2015
In recent inter partes review (“IPR”) decisions, the Patent Trial and Appeal Board (“PTAB”) has consistently held that patent owners have failed to provide sufficient evidence of secondary considerations in support of patent validity.  Cardiocom,...
February 24, 2015
The Patent Trial and Appeal Board (“PTAB”) allowed what appear to be the second and third amendments in an inter partes review (“IPR”) in Riverbed Technology, Inc. v. Silver Peak Sys, Inc., IPR Nos. 2013-00402...
February 24, 2015
February 13, 2015
On February 5, 2015, the Judiciary Committee of the House of Representatives’ re-introduced an anti-patent troll bill (Innovation Act of 2015, H.R. 9).  This bill is essentially the same as the bill that was passed...
February 11, 2015
In an inter partes review (“IPR”) proceeding, a patent owner should submit any relevant evidence that might lead to a nonobviousness determination.  Relevant evidence may include secondary indicators of nonobviousness such as (1) commercial success,...
February 04, 2015
  In Par Pharm., Inc., et al. v. Jazz Pharm., Inc., CBM2014-00149, 00150, 00151, and 00153, three generic drug companies challenged four Orange Book listed patents – 7,895,059 (“the ʼ059 patent”), 8,457,988 (“the ʼ988 patent),...
January 29, 2015
  On November 25, 2014, The Patent Trial and Appeal Board (PTAB) entered its final written decision in Sequenom, Inc., v.  Board of Trustees of Leland Stanford Junior Univ. (IPR2013-00390, Paper No. 45. While Inter...
January 23, 2015
In proceedings before the Patent Trials and Appeals Board (PTAB or Board), Patent Owners are allowed to propose substitute claims in the event that one or more claims is cancelled.  35 U.S.C. §§ 316(d)(1), 326(d)(1). ...
January 16, 2015
In Trivascular, Inc. v. Shaun L.W. Samuels (IPR2013-00493, Paper No. 45, December 3, 2014), the PTAB held that Trivascular (Petitioner)  had not proved that any of the instituted claims in the inter partes review (IPR)...
December 23, 2014
In a recent Order, the Board authorized patent owner, Motion Games, LLC, to file a motion to terminate the proceedings because petitioner, Nintendo of America, Inc, allegedly failed to list all real parties-in-interest in three...
December 15, 2014
  Ariosa Diagnostics v. The Board of Trustees of the Leland Stanford Junior University. (IPR2013-00308, Paper No. 40, November 19, 2014) In a recent inter partes review (IPR), the Patent and Trial Appeals Board (PTAB)...
December 08, 2014
SDI Technologies, Inc. filed an inter partes reviews (IPR) of U.S. Patent No. 8,364,295 (IPR2013-00465).  IPR2013-00465 is one of a few IPRs filed by SDI against this family of patents.  U.S. Patent No. 8,364,295 (“the...
December 04, 2014
    On November 21, 2014, the PTAB denied Mitsubishi’s petition for a rehearing of the board’s decision denying institution of an inter partes review against some claims of Celgard’s U.S. Patent No. 6,432,586 (“‘586...
November 24, 2014
In Verstata Software, Inc. v. Callidus Software, Inc., 2014-4682 (November 20, 2014), the Court of Appeals for the Federal Circuit reversed the District of Delaware’s denial of a motion to stay the district court case...
November 21, 2014
  In a recent Inter Partes Review (IPR) proceeding, patent owner Click-To-Call Technologies LP failed in its attempt to prevent the institution of an IPR of U.S. Patent No. 5,818,836 sought by petitioner YP Interactive...
November 05, 2014
The Patent Trial and Appeal Board (PTAB) recently entered final written decisions in Ariosa Diagnostics v. Verinata Health, Inc., IPR 2013-00276, Paper No. 43 (“Ariosa”) and Athena Automation Ltd. v. Husky Injection Molding Systems Ltd....
October 31, 2014
  In two related inter partes review final written decisions, the PTAB relied on extrinsic evidence to invalidate patent claims.  In Mobotix Corp. v. e-Watch, Inc., Petitioner Mobotix Corp. challenged the validity Patent Owner E-Watch,...
October 28, 2014
Declarations can play a critical role in an Inter Partes Review (“IPR”) proceeding.  To date, most IPR petitions filed with the Patent Trial and Appeal Board (“PTAB”) have included a supporting declaration.  Further, the PTAB...
October 21, 2014
In the final decisions issued on September 18, 2014 for two related proceedings, the Patent Trial and Appeal Board considered motions to exclude evidence involving webpage printout documents from Wikipedia and Webopedia.  See SAP America,...
October 14, 2014
  In an Inter Partes Review proceeding, patent owner Escort, Inc., who was permitted to provide live testimony during the oral hearing, lost its bid to antedate the only two references relied on by petitioner...
October 09, 2014
While an IPR petitioner may challenge the validity of a patent based on any prior patents or printed publications under 35 U.S.C. §311(b), scouring the internet, libraries, or personal repositories looking for product advertisements or...
September 26, 2014
In a recent Inter Partes Review Final Decision, the Patent Trial and Appeals Board (PTAB) held that claims 1 -13 and 16-18 of U.S. Patent No. 7,544,094 were unpatentable over a reference in view of...
September 15, 2014
The Central Reexamination Unit (“CRU”) appears to be at odds with the Board of Patent Trial and Appeal Board (“PTAB”) with respect to a Patent Owner’s ability to amend or add claims in an ex...
September 11, 2014
Inter Partes Review (IPR) is quickly becoming a popular means to challenge the validity of issued patents at the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB).  According to USPTO statistics,...
September 09, 2014
Recently, in an Inter Partes Review proceeding, patent owner Honeywell International Inc., failed in its attempt to obtain additional discovery under 37 C.F.R. § 42.51(b)(2).  Mexichem Amanco Holdings S.A. de C.V. v. Honeywell International, Inc. (IPR2013-00576, Paper...
September 03, 2014
  In a recent Inter Partes Review Final Decision, the Patent Trial and Appeals Board (PTAB) held that the petitioner had not proven by a preponderance of evidence that instituted claims 1, 13, and 25...
August 18, 2014
  In Vibrant Media, Inc. v. General Electric Co. (IPR2013-00172), a recent inter partes review (IPR) decision, the Patent Trial and Appeal Board (PTAB) analyzed the patentability of claims that recite an apparatus but also...
August 11, 2014
The USPTO America Invents Act (AIA) Trial statistics dated July 31, 2014, show a recent decrease in the percentage of trials instituted and a large increase in the number of IPR petitions. When similar statistics...
July 31, 2014
In Redline Detection, LLC v. Star Envirotech, Inc., (IPR2013-00106, Paper 66, June 30, 2014) the Patent Trial and Appeal Board (“the PTAB”) held that the Petitioner, Redline Detection, failed to show by a preponderance of...
July 25, 2014
Nuvasive, Inc. v. Warsaw Orthopedic, Inc. (IPR2013-00206, Paper No. 65, July 10, 2014) In a recent inter partes review (IPR), the Patent and Trial Appeals Board (PTAB) found that only some of the grounds of...
July 11, 2014
On July 10, 2014, in Virtualagility v. Salesforce.com Inc. et al., 2014-1232, a divided panel of the Court of Appeals for the Federal Circuit reversed the Eastern District of Texas’ denial of a motion to...
June 23, 2014
The ABB, Inc. v. ROY-G-BIV Corp. series of Inter-Partes Review (IPR) proceedings are the first such proceedings where the Patent Trial and Appeal Board (PTAB) has held that all of the challenged claims are patentable. ...
June 10, 2014
In International Flavors & Fragrances Inc. v. United States, Case 2013-00124 (Paper No. 12) the Board granted the first motion to amend by adding new substitute claims in an inter partes review.  The Patent Owner...
June 05, 2014
  In a final decision issued on April 21, 2014, the Patent Trial and Appeal Board (PTAB) invalidated the sole claim of Luv N’ Care’s design patent for a baby drinking cup (U.S. Patent D617,465)...
May 22, 2014
In LKQ Corporation v. Clearlamp, LLC (IPR2013-00020, Paper 73), the Patent Trial and Appeal Board upheld the validity of 12 of 24 claims in U.S. Patent 7,297,364, a patent concerning a method for the refurbishing...
May 08, 2014
A recent decision by the Patent Trial and Appeal Board (“Board”) in adidas v. Nike, IPR2013-00067, suggests stringent requirements to establish patentability over other known prior art when amending claims in an inter partes review. ...
April 25, 2014
The America Invents Act (“AIA”) act granted final authority whether to institute an inter partes review (“IPR”) to the Director of the United States Patent Office (“the PTO”).  Specifically, 35 U.S.C. §314(d) states that “[t]he...
April 16, 2014
Two recent decisions of the Patent Trial and Appeal Board (PTAB) addressed whether a non-party to an Inter Partes Review should be considered a real party-in-interest. Any real party-in-interest must be disclosed by the Petitioner...
April 08, 2014
In three recent inter partes reviews (IPRs), the Patent Trial and Appeal Board (PTAB) construed means-plus-function claim terms under 35 U.S.C. § 112, sixth paragraph.  These decisions show that an IPR Petitioner must offer a...
April 04, 2014
Schrader-Bridgeport International, Inc. et al. v. Continental Automotive Systems US, Inc., IPR2013-00014 (Patent Tr. & App. Bd. 2014) In a recent inter partes review (IPR) decision, Schrader-Bridgeport International, Inc. et al. v. Continental Automotive Systems...
March 21, 2014
    On January 24, 2014, the USPTO published proposed rules for patent assignment recordation that would require applicants to also include attributable owner information.  The proposal would include a “ultimate parent entity” that owns...
March 14, 2014
Two recent Final Written Decisions from inter partes review proceedings offer patent owners a rare positive news – the survival of one or more of the challenged claims in its entirety.  Prior to these opinions,...
March 04, 2014
  David A. Collins Two recent Board final decisions denying the patent owner’s motion to amend claims provide further guidance regarding the strict and exacting requirements for filing a successful amendment during an Inter Partes...
February 20, 2014
For last year’s statistics, click here
February 07, 2014
In CRS Advanced Technologies, Inc. v. Frontline Technologies, Inc. (CBM2012-00005, Paper No. 66, entered January 21, 2014), a transitional covered business method (CBM) review, the Patent Trial and Appeal Board (PTAB) held all instituted claims...
February 03, 2014
In two final decisions dated January 23, 2014, the Patent Trial and Appeal Board (PTAB) canceled all reviewed claims of U.S. Patent No. 6,064,970, including both a single claim that the PTAB found to be directed to...
January 31, 2014
More than 800 inter partes reviews (“IPRs”) have been filed under the new U.S. Patent Office trial proceedings; however, a smaller number of patents have been subject to IPR proceedings. A growing trend in inter...
January 30, 2014
As discussed previously, the Board has imposed significant limitations on a Patent Owner’s ability to amend a claim in inter partes review. See Idle Free Systems, Inc. v. Bergstrom (IPR2012-0027 Paper 26). These limitations include a requirement...
January 27, 2014
35 USC §317 allows parties to terminate an instituted inter partes review (IPR) “unless the Office has decided the merits of the proceeding before the request for termination is filed.”   See 35 U.S.C. §317; see...
January 22, 2014
In Idle Free, the Board relied on the stringent requirements for establishing “general patentability” and denied Bergstrom’s renewed motion to amend the claims. The Board’s decision exemplifies the strict nature of these proceedings by denying Bergstrom’s motion...
December 15, 2013
The Board’s requirements for amending a claim in inter partes review impose significant limitations for a Patent Owner as compared to conventional patent prosecution, reissue proceedings, or ex parte reexamination. The Board’s recent decisions have...
December 13, 2013
In its first inter partes review (IPR) decision, the Patent Trial and Appeal Board (PTAB) indicated that it is willing to find obviousness based on a combination of as many as four prior art references,...
December 13, 2013
On December 5, 2013, the Supreme Court granted certiorari in Alice Corporation v. CLS Bank, in response to a petition filed on September 4, 2013 in the wake of the en banc CLS Bank decision...
November 24, 2013
Ranbaxy recently settled an inter partes review (IPR) proceeding, using a USPTO patent trial to avoid potentially costly Hatch-Waxman litigation. Ranbaxy Laboratories, Ltd v. Vertex Pharms., Inc., IPR2013-0024. Ranbaxy, an Indian-based company which develops and...
November 21, 2013
On November 20, 2013, the House Judiciary Committee passed an anti-patent troll bill (Innovation Act of 2013, H.R. 3309). As discussed in our previous post, most of the provisions are directed towards discouraging patent trolls...
November 14, 2013
The Board’s requirements for amending a claim in inter partes review impose significant limitations for a Patent Owner as compared to conventional patent prosecution, reissue proceedings, or ex parte reexamination. The Board’s recent decisions have...
November 11, 2013
Rebuking the USPTO’s standard practice in inter partes reexaminations of evaluating evidence of secondary considerations only after the USPTO has already found that a prima facie case of obviousness has been established, the Federal Circuit...
November 06, 2013
Although most of the provisions of the House of Representatives’ recent anti-patent troll bill (Innovation Act of 2013, October 23, 2013) are directed to discouraging patent trolls from filing Federal district court infringement actions, there...
November 04, 2013
Practitioners understand that an inter partes review cannot be instituted more one year after service of a complaint. There have, however, been several questions regarding how the one year period is calculated. For example, if...
June 19, 2013
In a decision that alters the risks of Hatch-Waxman Act litigation, the Supreme Court in FTC v. Actavis held that settlements involving reverse payments may violate U.S. antitrust laws. The decision imposes a unique burden...
November 23, 2012
The Board’s decisions in Liberty Mutual (CBM2012-00003) denying grounds raised in a petition for covered business method patent review are momentous in several respects. The Orders, denying 196 of the 422 grounds of patentability raised...
September 04, 2012
Are some patents exempt from post-grant attack under the America Invents Act? The USPTO comments on post-grant trials suggest that the Office may “exercise its discretion” to refuse to review a patent on the simple...
August 24, 2012
The final Patent Trial Practice Guide makes significant revisions to the original proposed version, and presents a comprehensive but concise summary that provides the best introduction to procedure in post-grant trials. In the next few...
May 20, 2012
The USPTO comments on proposed rules for post-grant proceedings under the America Invents Act include estimates of the comparative costs of inter partes review, post-grant review, and district court patent litigation. Not surprisingly, the costs...
May 02, 2012
Under the America Invents Act, any person who is not the owner of a patent may seek inter partes review or post-grant review in the USPTO, avoiding the jurisdictional case-or-controversy requirement that has limited district...
April 28, 2012
My personal comments submitted to the USPTO on the proposed Inter Partes Rules, directed to derivation, interferences, “routine” discovery, the patent owner’s amendment, settlement, page limits of pleadings, protective orders, service of petitions, and pro...
April 27, 2012
A generic drug maker who is not the first ANDA applicant to file a ¶ IV certification of invalidity or noninfringement is not entitled to 180-day marketing exclusivity, and may be kept out of the...
April 03, 2012
Derivation proceedings under the America Invents Act will provide a powerful administrative remedy for theft of inventions by competitors who are the first to file patent applications for inventions derived from earlier inventors. The proposed...
February 27, 2012
The Trial Rules proposed by the USPTO to implement post-grant oppositions under the America Invents Act would create a new duty of disclosure for parties, that is not limited to the materiality standard for inequitable...
February 21, 2012
The post-grant provisions of the America Invents Act were intended to provide new avenues of attack on issued patents, and these “anti-trolling” measures effectively establish a more general Anti-Patent Act. The proposed inter-partes review and...
February 14, 2012
The USPTO has issued proposed general rules governing the conduct of post-grant proceedings, including a Practice Guide for Proposed Trial Rules, and a more detailed proposed Rules of Practice for Trials before the new Patent...
January 17, 2012
The post-grant opposition proceedings created by the America Invents Act, used in parallel with ANDA litigation, will alter the strategies of ¶ IV practice under the Hatch-Waxman Act. The use of USPTO post-grant proceedings in...
December 28, 2011
The post-grant opposition proceedings created by the America Invents Act, used in parallel with litigation under the Hatch-Waxman Act, will alter the timetable that has favored branded manufacturers, and can preserve the first ¶ IV...
December 16, 2011
Today marks the beginning of a period in which USPTO inter partes post-grant opposition proceedings will gradually disappear for many important US patents. Patents issuing after December 16, 2011 will be subject to challenge under...
December 01, 2011
If the USPTO exercises its discretion to dismiss future interferences “without prejudice to the filing of a petition for post-grant review” under § 6(f)(3)(A) of the America Invents Act, the first-to file reform Act may...
November 29, 2011
Contrary to general euphoria, the America Invents Act does not end the first-to-invent system or patent interferences to determine priority of invention, even for patents issuing from applications filed after the Act’s “first-to-file” effective date...
November 17, 2011
THE FUTURE OF PATENT LITIGATION UNDER THE AMERICA INVENTS ACT – STRATEGIC USE OF NEW USPTO POST-GRANT OPPOSITIONS A 2-Session Course by Sughrue Mion, PLLC IP WEEK 2011/Brussels, December 7 and 8 The new America...
November 09, 2011
A critical factor in the decision to initiate a post-grant review or inter partes review proceeding in the USPTO will be the estoppel consequences of a decision confirming the patentability of challenged claims. Following the...
November 09, 2011
The new PTO post-grant oppositions will not replace district court litigation, and will not be suitable in every action, but they will often be effectively used by generics as parallel, auxiliary proceedings in ANDA litigation....
November 05, 2011
The newly enacted America Invents Act will result in the most radical changes to U.S. patent law in 60 years, replacing historic novelty standards with a worldwide absolute novelty requirement, subject only to an illusory...
November 05, 2011
The newly enacted America Invents Act will result in the most radical changes to U.S. patent law in 60 years, replacing historic novelty standards with a worldwide absolute novelty requirement, subject only to an illusory...
November 04, 2011
The 2011 America Invents Act radically revises the U.S. system of post-grant patent review, by providing 4 new post-grant opposition proceedings in addition to existing ex parte reexamination. The strategic use of interrelated post-grant proceedings...