Patent Owners Beware of Prior Adjudication Involving Related Patents

By Joseph M. Hallman

When patent claims are construed and interpreted in an adjudicative proceeding, such as patent infringement litigation in federal court or in an adjudicative proceeding before the Patent Trial and Appeal Board (“PTAB”), a preclusive effect can arise which can affect the validity of claims of related patents. For example, on December 8, 2022, in Google […]

Federal Circuit reiterates holding regarding errors in prior art references

By Joseph M. Hallman

On July 11, 2022, in LG Electronics Inc. v. ImmerVision, Inc., the Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed the United States Patent Trial and Appeal Board’s (“PTAB”) final written decisions in two inter partes reviews (“IPR”) wherein it was held that LG Electronics Inc. (“LG”) failed to show that the challenged […]

Federal Circuit affirms introduction of evidence in IPR petitioner’s reply briefs

By Joseph M. Hallman

On November 25, 2020, in VidStream LLC v. Twitter, Inc., the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) affirmed an appeal from the Patent Trial and Appeal Board (“PTAB”) holding evidence introduced by the petitioner in a reply brief of an inter partes review (“IPR”) proceeding, after the petition had been […]

Precedential Opinion Panel Decides Issue Joinder in IPR is Permissible

A panel of the Patent Trial and Appeal Board (PTAB) issued a precedential decision March 13, 2019 stating that a party that challenges a patent in an inter-partes review (IPR) proceeding can join their own petition challenging another’s patent, in order to add new issues, but only in limited circumstances. Here, Proppant Express Investments LLC […]

PTAB Makes Broadest Interpretation on Estoppel in IPRs

Drafting post grant proceeding petitions needs to be done carefully due to their limited space. Last week, the Patent Trial and Appeal Board (PTAB) further increased the pressure to use the limited number of words effectively when Kingston Technology Company, Inc. v. Spex Technologies, Inc. (Case IPR2018-01002) was entered. Kingston, the petitioner, attempted to file […]

An IPR Appellant Must Establish an Injury to Have Standing

By Blog Staff

In JTEKT Corp. v. GKN Auto. Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018), the United States Court of Appeals for the Federal Circuit (CAFC) dismissed an inter partes review (IPR) appeal due to lack of standing. The requirement for an appellant to establish an injury in fact remains firm. JTEKT petitioned for an […]

AUTM’s Recommends Narrow Changes to NIST on the ROI Initiative

The National Institute of Standards and Technology (NIST) recently issued a public Request for Information for the Return on Investment (ROI) Initiative. The Association of Technology Managers (AUTM), who supports the ROI Initiative, stresses in their response that the fundamental principles of the Bayh-Dole Act be preserved. As pointed out by AUTM, Bayh-Dole has significantly […]

PTAB to Consider When Conference Materials are Prior Art

By Blog Staff

In a consolidated appeal from two related Patent Trial and Appeals Board (“PTAB”) decisions, the Court of Appeals for the Federal Circuit (“CAFC”) affirmed-in-part and vacated-in-part the PTAB’s findings. The CAFC affirmed the PTAB’s conclusion that challenged claims would not have been obvious over two specific references. However, the CAFC vacated the PTAB’s determination that […]

Inter Partes Review Proceedings (IPRs) Do Not Violate Article III of the Constitution per U.S. Supreme Court

By Jonathan L. Kennedy

The U.S. Supreme held in a 7-2 decision (Justice Gorsuch and Chief Justice Roberts dissenting), Oil States Energy Servs. V. Greene’s Energy Group, LLC, that the Inter Partes Review proceedings, commonly referred to as IPRs, do not violate Article III or the Seventh Amendment. The Court was deciding two primary constitutional challenges: (1) whether IPRs violate […]

Patentability and Patent Protection: Is the Pendulum Starting to Swing Back?

The latest US Chamber of Commerce Global Innovation Policy Center’s International IP Index still places the US on top overall for intellectual property. However, this is due to strength in enforcement of copyrights and trademarks, and improvements in identifying counterfeit goods before they enter the country. According the to Index, the US has dropped to […]