The PTAB recently confirmed that the doctrine of assignor estoppel does not apply to IPR proceedings. Esselte Corp. v. Sanford L.P., IPR2015-00771, Paper 13 (Aug. 28, 2015). Assignor estoppel is an equitable doctrine that generally prohibits an assignor
PTAB refuses to terminate CBM on alleged mootness grounds
In Allscripts Healthcare Solutions, Inc. v. MyMedicalRecords, Inc., a Patent Owner requested termination of an instituted CBM as moot based on a final judgment in an underlying District Court case. CBM2015-00022, Paper 20 (August 26, 2015). The PTAB,
Motion to exclude is “improper vehicle” to challenge qualification of prior art under § 102(b)
In Chicago Mercantile Exchange Inc. v. 5th Market, Inc., the PTAB issued a Final Written Decision finding the challenged claims unpatentable as obvious over two references. CBM2014-00114, Paper 35 (Aug. 18, 2015). In doing so, the Board provided
PTAB considers a copyright notice to be evidence of publication
In LG Electronics, Inc. v. Advanced Micro Devices, Inc., the PTAB held that a copyright notice in a cited reference was evidence of publication as of the copyright date. The PTAB also held that a date without a copyright
PTAB confirms IPR petitions cannot be time-barred based on ITC complaint
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.
PTAB confirms that estoppel does not bar subsequent petitions on non-instituted claims
In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB denied a Patent Owner’s motion to terminate a CBM proceeding, holding that estoppel under 35 U.S.C. § 325(e)(1) does not apply to claims previously denied institution. CBM2014-00176, Paper 28
PTAB confirms that it lacks authority to stay prosecution of related applications
In Chums, Inc. and Croakies, Inc. v. Cablz, Inc., the PTAB denied Petitioner’s request to file a motion to suspend prosecution of patent applications that were related to the patent that was the subject of the IPR proceeding. IPR 2014-01240
PTAB decides that district court ruling favorable to Patent Owner does not justify stay of CBM proceedings
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
PTAB corrects petition’s filing date because e-filing system was down
In E*Trade Financial Corporation, et al. v. Droplets, Inc., the PTAB granted a motion to change the filing date of an IPR petition, according a filing date based on the initial submission of the petition via e-mail when the
More lessons learned about motions to stay pending CBM review
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