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Federal Circuit rules it has no interlocutory jurisdiction on denial of motion to stay until CBM Review is instituted

We have previously written about the emerging trend of district courts not granting motions to stay until IPR or CBM proceedings have been instituted. The Federal Circuit seemed to indirectly support that approach in its recent decision in Intellectual Ventures II LLC v. JPMorgan Chase & Co., in which it held that it lacked jurisdiction … Continue reading

PTAB finds patent non-obvious based on secondary considerations

In Intri-Plex Techs., Inc. v. Saint-Gobain Performance Plastics Rencol Ltd., the PTAB found that the patented invention was not obvious based on the secondary considerations of commercial success and copying, even though it found that the prior art disclosed all of the limitations and that there was motivation to combine the teachings. IPR2014-00309, Paper 83 … Continue reading

PTAB grants Patent Owner’s adverse judgment request, thereby barring joinder of subsequent IPR petition

In Artsana USA, Inc. v. Kolcraft Enterprises, Inc., the PTAB granted the Patent Owner’s request for adverse judgment under 37 C.F.R. § 42.73(b) and found the challenged patent claims to be unpatentable. IPR2014-01053, Paper 24 (April 3, 2015). In so doing, the Board prevented a subsequently-filed petition from being joined to the IPR-at-issue and effectively … Continue reading

PTAB discourages delayed challenges to identification of real-parties-in-interest

In Sony Computer Entertainment America LLC, v. Game Controller Technology LLC, the PTAB was faced with a situation where a patent owner waited until a few weeks before an IPR proceeding was scheduled to end to challenge the petition’s identification of real-parties-in-interest (RPIs) under 35 U.S.C. § 312(a)(2), despite having all relevant information long before … Continue reading

PTAB permits post-institution challenge to identification of all real-parties-in-interest

In GEA Process Engineering, Inc., v. Steuben Foods, Inc., the PTAB vacated its institution decision and terminated five IPRs because the petitions failed to identify all real-parties-in-interest (RPIs). IPR2014-00041, Paper 140 (December 23, 2014) (Public redacted version). The Petitioner argued that the Patent Owner should be barred from raising the RPI issue after institution of … Continue reading

Federal Circuit affirms PTAB in first review of IPR decision

In In re Cuozzo, the Federal Circuit held, in a 2-1 opinion, that decisions of the PTAB to institute an IPR are not appealable and confirmed the use of the broadest reasonable interpretation standard for claim construction proceedings in IPR. In re Cuozzo Speed Techs., LLC, No. 2014-1301 (Fed. Cir. Feb. 4, 2015). The Court … Continue reading

PTAB terminates IPR after institution for failure to identify all real parties in interest

In Atlanta Gas Light Co. v. Bennett Regulator Guards, Inc., the PTAB vacated its institution decision and terminated the IPR because the petition failed to identify all real parties in interest. IPR2013-00453, Paper 88 (Jan. 6, 2015). 35 U.S.C. § 312(a)(2) provides that an IPR petition may be considered only if the petition identifies all … Continue reading

PTAB grants request for rehearing based on overlooked arguments

In Handi Quilter, Inv. v. Bernina International AG, the PTAB granted the Petitioner’s request for rehearing based on arguments it overlooked in its previous non-institution decision. IPR2014-00270, Paper 17 (December 30, 2014). The challenged claims were directed to a quilting machine that automatically inserts stitches based on movement of the fabric, with the movement being … Continue reading

Norton Rose Fulbright’s free IPR webinar series begins on January 22

All readers of Patent Challenges are invited to attend our firm’s free IPR webinar series that begins on January 22nd and will continue throughout 2015.  This is sure to be an informative series for anyone looking to learn more about IPR practice – and CLE credit will be available. The first session—led by Norton Rose … Continue reading

Board authorizes motion to dismiss following institution

In GTNX, INC. v. INTTRA, INC., the PTAB allowed the Patent Owner to file a motion to dismiss several instituted covered business method (CBM) reviews, despite the fact that the ground for dismissal was not raised in the Patent Owner’s Preliminary Response. CBM2014-00072, CBM2014-00073, CBM2014-00074 & CBM2014-00075, Paper 15 (Oct. 27, 2014). Following institution of four … Continue reading

PTAB interprets the scope of the declaratory judgment bar for IPR petitions

In Ariosa Diagnostics v. Isis Innovation Limited, the PTAB ruled that filing a civil action for declaratory judgment of noninfringement and asserting an affirmative defense of invalidity do not bar a party from later filing an IPR petition. IPR2012-00022, Paper 166 (Sep. 2, 2014). The Patent Owner contended that the IPR petition was statutorily barred … Continue reading

PTAB denies request to add additional challenge to claims in instituted CBM review

In Indeed, Inc. v. Career Destination Development, LLC, the PTAB denied the Petitioner’s request to file a motion to add the review of certain dependent claims under 35 U.S.C. §112, first paragraph, finding that the Petitioner did not present a “sufficient factual basis” to authorize the filing of the motion. CBM2014-00069 & CBM2014-00070, Paper 15 (Sep. … Continue reading

PTAB panel creates new procedure for challenging scope of petitioner’s reply

In Toyota Motor Corp. v. Hagenbuch, the PTAB was presented with a novel procedural question regarding challenging the scope of the petitioner’s reply, which the Board resolved by creating what appears to be a new procedure.  IPR2013-00638, Paper 31 (Oct. 16, 2014). Every IPR trial will have at least three major filings: the petition, in which … Continue reading

PTAB grants corrected filing date based on “clerical error”

In Schott Gemtron Corp. v. SSW Holding Company, Inc., the Patent Trial and Appeal Board (PTAB) granted the Petitioner’s motion to correct the filing date of its IPR petition based on a “clerical error” in uploading an incorrect exhibit. IPR2014-00367, Paper 30 (Sep. 22, 2014). The IPR petition, filed on January 18, 2014, listed Exhibit … Continue reading

Deadline for submitting comments to USPTO on AIA trials is this Thursday

A quick reminder that this Thursday (October 16, 2014) is the deadline for submitting comments responsive to the USPTO’s Request for Comments on America Invents Act (AIA) trial proceedings, which was originally published in the Federal Register on June 27, 2014.  The original deadline for comments was September 16, 2014, which the USPTO extended to this week … Continue reading

Welcome to Patent Challenges

When the America Invents Act (AIA) was passed into law in 2011, it was generally understood that the new post-issuance proceedings created by the law—Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBM)—would change the landscape of patent ownership and assertion. But the creation of these proceedings has had perhaps an … Continue reading
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