Brandy Nolan (US)

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PTAB confirms IPR petitions cannot be time-barred based on ITC complaint

By Brandy Nolan (US) on July 17, 2015 Posted in General

Under 35 U.S.C. § 315(b), a petitioner, real party in interest, or privy of the petitioner has only one year after service of a complaint alleging infringement to request inter partes review of the patent-in-suit. In LG Electronics, Inc. v. Straight Path IP Group, Inc., the PTAB held that the one-year time bar set by … Continue reading

PTAB decides that district court ruling favorable to Patent Owner does not justify stay of CBM proceedings

By Brandy Nolan (US) on May 21, 2015 Posted in General

We have previously written about stays of litigation before the PTAB has acted on a petition for IPR or CBM review. A recent Board decision addresses a contrasting circumstance: staying a CBM proceeding in light of activity in litigation. In Samsung Elecs. Am., Inc. v. Smartflash LLC, (and related CBM review proceedings), the Board denied … Continue reading

More lessons learned about motions to stay pending CBM review

By Brandy Nolan (US) on May 13, 2015 Posted in General

In Credit Card Fraud Control Corp. v. Maxmind, Inc., a defendant moved a Northern District of Texas court to stay litigation under AIA § 18(b)(2) based on a petition for CBM review that had not yet been instituted by the PTAB. No. 3:14-cv-3262, 2015 U.S. Dist. LEXIS 53775 (N.D. Tex. Apr. 24, 2015). Similar to the … Continue reading

Lessons learned in establishing conference papers as prior art in IPR petitions

By Brandy Nolan (US) on May 8, 2015 Posted in Institution decisions

In Hughes Network Sys., LLC v. Cal. Inst. of Tech., the PTAB addressed a Patent Owner’s challenge to the availability of two papers from the same conference (albeit different years) as printed publications for use against the challenged claims. IPR2015-00060, Paper 18 (Apr. 27, 2015). A declaration of the co-author was deemed insufficient to establish … Continue reading