Federal Circuit Backs PTAB Decision Curtailing A Party's Use Of...
In Redline Detection v. Star Envirotech, the Federal Circuit confirmed that the PTAB can decline to consider timely filed “supplemental” information from a petitioner (after filing its petition)...
View ArticleSupreme Court Accepts 1st IPR Appeal: Cuozzo Could Mark Turning Point for...
On January 15, 2016, the Supreme Court granted certiorari in Cuozzo Speed v. Lee, which represents the first time the high Court will address an AIA proceeding, in this case an IPR decision. Based on...
View ArticleHigh Stakes Race Between Apple and VirnetX: Will PTAB Trump The Texas Jury's...
A Texas jury today raised the stakes even higher in a race involving parallel proceedings between the PTAB and Texas district court when it found that Apple infringed the VirnetX patents and awarded to...
View ArticleCAFC Partially Relaxes IdleFree Requirements for Amendments During IPR
On February 11, 2016, in Nike v. Adidas (Fed. Cir. 2016), the Federal Circuit partially relaxed the hurdle for a patent owner to amend claims during an IPR or other AIA proceeding. This follows the...
View ArticleVirnetX Faces Follow-on IPR Petition from a Different Petitioner After...
In IPR2014-00614, Microsoft filed a petition for IPR against US Patent No. 7,418,504 (“the ‘504 patent) owned by VirnetX, which was instituted based upon anticipation grounds over Kiuchi (see...
View ArticleThe Latest Twist In The Apple v. VirnetX IPRs: Appeals Court Issues Temporary...
On March 7, 2016, the Federal Circuit issued a temporary stay to permit briefing by the parties on the question of whether the PTAB properly ruled that Apple could use the joinder process in Mangrove...
View ArticlePTAB Institutes Kyle Bass IPR Against Pharmaceutical Patent Based On SEC...
Kyle Bass has filed numerous prior IPR petitions against pharmaceutical patents, some of which have been denied due to use of prior art references that were not sufficiently proven to be “publicly...
View ArticlePatent Due Diligence: All That Glitters May Not Be PTAB Gold
An obvious but sometimes overlooked item when conducting patent due diligence is to check for PTAB proceedings (CBM, IPR, or PGR). Although the Patent Application Information Retrieval System (PAIR)...
View ArticleUSPTO Releases New Rules For AIA Post-Grant Proceedings
On March 31, 2016, the USPTO released its long-awaited package of rules for AIA post-grant proceedings. The final rules largely track the proposed rules (see “USPTO Proposes Extensive Changes to AIA...
View ArticleThe New AIA Rules May Help Patent Owners Avoid Trial
On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to...
View ArticleGuarding Against Conclusory Statements & Why It Matters Even More Under The...
A common deficiency highlighted in recent PTAB decisions denying institution of an IPR petition is that an expert declaration offers only “conclusory” statements in relation to one or more key aspects...
View ArticleReading The Cuozzo Tea Leaves: Best Practices Pending The Supreme Court's...
The Supreme Court of the United States heard oral argument today on claim construction in inter partes review (IPR) proceedings and the reviewability of institution decisions. On the claim construction...
View ArticleSurvey of Pharmaceutical IPRs Filed By Generic Drug Company Petitioners
We have reviewed a sub-group of 111 IPRs filed by generic drug companies against pharmaceutical patents to assess outcomes and trends. While our survey was not intended to capture every IPR filed by a...
View ArticleMagnum Offers New Path for Challenging AIA Decisions: Burden of Production
On July 25, 2016, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does...
View ArticleKeeping Up To Date On CRISPR – July 2016
CRISPR is a gene editing technique that promises to revolutionize genetic engineering, but already is raising ethical, business, and legal issues. This is the first in a monthly series of articles on...
View ArticleEstoppel Prevents Second IPR Petition Even When New References Were Missed By...
In a case that appears to be a case of first impression, the PTAB found in its decision denying institution in IPR2016-00781 that a final written decision in an earlier IPR created estoppel under 35...
View ArticleSovereign Immunity of State Universities: Can It Shield Them from AIA Patent...
In what appears to be a case of first impression, the PTAB is poised to rule on the question of whether state sovereign immunity prevents an IPR challenge from being maintained against a University of...
View ArticleFederal Circuit Finds IPR Petitioner Lacks Standing To Appeal
On January 9, 2017, in Phigenix, Inc. v. Immunogen, Inc., the Federal Circuit held that petitioner Phigenix lacked standing to appeal an adverse final written decision in an IPR. While acknowledging...
View ArticleFederal Circuit Again Reverses PTAB Obviousness Determination
In what is becoming a familiar basis for reversal of PTAB decisions, the Federal Circuit yet again reversed the PTAB for its failure to adequately explain the basis for combining multiple prior art...
View Article2017 Mid-Year Statistics Point to Continued Rise in IPR Petitions
March 31st marked the mid-point of the PTAB’s fiscal year and the release of mid-year statistics on AIA proceedings... ...One interesting trend is a continued increase in overall number of IPR...
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