Topic: General

PTAB confirms that estoppel does not bar subsequent petitions on non-instituted claims

By Jeff Kitchen (US) on June 25, 2015 Posted in General

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 (May 14, 2015). 35 U.S.C. § 325(e)(1) states that “[t]he petitioner in a post-grant review of a claim in … Continue reading

PTAB confirms that it lacks authority to stay prosecution of related applications

By Allan Braxdale (US) on June 7, 2015 Posted in General

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, Paper 22 (May 8, 2015). Petitioner “requested permission to file a motion to suspend prosecution … 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

PTAB corrects petition’s filing date because e-filing system was down

By on May 15, 2015 Posted in General

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 Board’s e-filing system (known as PRPS) was unavailable. IPR2015-00470, Paper 17 (Apr. 20, 2015). Unless otherwise … 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

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

By Andrew Liddell (US) on May 5, 2015 Posted in Federal Circuit, General

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

By Michelle Wang (US) and James Crawford (US) on April 24, 2015 Posted in General

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

By on April 21, 2015 Posted in General

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

By Nate Rees (US) on April 16, 2015 Posted in General

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

By on April 14, 2015 Posted in General

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

Rule changes for AIA trials are here, with more on the way

By Allan Braxdale (US) on April 1, 2015 Posted in General

The USPTO recently announced changes to the rules for trials before the PTAB under the AIA. The announcement, which may be found here, indicates that the changes will be implemented via a series of rule packages using a three-part roll-out plan, with the first rule package being effective as of March 27, 2015, and the … Continue reading

An emerging norm: no stay until PTAB grants IPR petition

By Andrew Liddell (US) on March 27, 2015 Posted in General

Defendants have one year from the date of service of a complaint of patent infringement to file a request for inter partes review of the asserted patent. 35 U.S.C. § 315(b). In Trover Group, Inc., et al. v. Dedicated Micros USA, et al., 2:13-CV-1047 (E.D. Tex. March 11, 2015), two defendants filed an IPR petition … Continue reading

Federal Circuit affirms PTAB in first review of IPR decision

By Michelle Wang (US) and James Crawford (US) on February 16, 2015 Posted in Claim construction, Federal Circuit, General, Institution decisions

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

By on February 11, 2015 Posted in General

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

By Tom Owens (US) on January 22, 2015 Posted in General

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

A reminder from the PTAB that pro hac vice admission is not automatic

By Talbot Hansum (US) on January 14, 2015 Posted in General

In QSC Audio Products, Inc. v. Crest Audio, Inc., the PTAB denied the Petitioner’s unopposed motion for pro hac vice admission because the affidavit in support of the motion failed to meet certain requirements. IPR2014-00127, Paper 32 (December 23, 2014). 37 C.F.R. § 42.10(c) provides that where lead counsel in a PTAB trial proceeding is … Continue reading

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

By on December 24, 2014 Posted in General

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

PTAB authorizes petitioner’s reply to preliminary response

By Ross Viguet (US) on December 15, 2014 Posted in General

In Johnson Health Tech Co. LTD v. Icon Health and Fitness, Inc., the PTAB authorized the Petitioner to file a Reply to the Patent Owner’s Preliminary Response in an IPR proceeding. IPR2014-01242, Paper 12 (November 28, 2014). 35 U.S.C. § 313 provides that, if an IPR Petition is filed under 35 U.S.C. 311, the Patent … Continue reading

Board denies patent owner’s request to file motion to vacate Final Written Decision

By Eagle Robinson (US) on December 10, 2014 Posted in General

In Salesforce.com, Inc. v. VirtualAgility, Inc., the PTAB refused to permit the Patent Owner to file a motion to vacate the Final Written Decision, even though the parties settled while an appeal to the Federal Circuit was still pending. CBM2013-00024, Paper 52 (Nov. 24, 2014). The Board held in the CBM Review that all challenged … Continue reading

Board authorizes motion to dismiss following institution

By on December 8, 2014 Posted in General

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

By on December 2, 2014 Posted in General

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

By Michelle Wang (US) and James Crawford (US) on November 10, 2014 Posted in General

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

By Tom Owens (US) on November 6, 2014 Posted in General

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”

By Michelle Wang (US) and James Crawford (US) on October 17, 2014 Posted in General

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