Analysis of patent litigation, PTAB practice, prosecution and pharma IP, written on the data behind LexDana.
Tagged ptab · clear
Invalidity Counterclaims-In-Reply Will Not Trigger 35 U.S.C. § 315(a) Congress created IPR to provide a “quick and cost effective alternative[ ] to litigation.” To fulfill that role, Congress limited a party’s ability to seek an IPR…
Written by : Mak Tsunozaki, Ph.D. & Kendall Loebbaka ARTHREX, INC. v. SMITH & NEPHEW, INC. Before Prost, Newman, Lourie, Dyk, Moore, O’Malley, Reyna, Wallach, Taranto, Chen, Hughes, and Stoll. Petition for rehearing en banc of a panel decision of an…
PTAB Estoppel & Inequitable Conduct Inequitable conduct before the USPTO is an equitable defense to patent infringement that, if proved, bars enforcement of a patent. Thereasense, Inc. v. Becton, Dickinson & Co., 649 f .3d 1276, 1285 (Fed. Cir. 2011).…
Expert Agency Shown Deference in Matters of Claim Scope While IPR petitioners may only challenge patent claims based upon patents and printed publications (§§ 102 and 103), the PTAB trial record can be leveraged in parallel district court…
The Fed. Cir. panel decision in Samsung Elec. Amer., Inc. v. Prisua Engineering Corp. , Appeal No. 2019-1169, 2019-1260 (Fed. Cir., Feb. 4, 2020) flew under my blogging radar for some time, but since Prisua petitioned for rehearing en banc on March 5th, I…
Earlier this year, we analyzed the 2019 patent activities in Patexia Insight 74 . Among our observations, we noticed a sharp decline in the number of IPR petitions filed last year. In 2019, a total of 1271 IPR petitions were filed, compared to 1607 IPR…
Attorney Fees Available for Successful Defendant As discussed back in September , district courts look to PTAB developments in assessing fee awards under 35 U.S.C. § 285. Recently the Eastern District of Michigan suggested that it could even find…
CAFC Implies PTO Might Overlook Some 112 Issues The Patent Trial & Appeal Board (PTAB) does not accept trial grounds under 35 U.S.C § 112 in Inter Partes Review. This is because the IPR statutes only authorize trial grounds based on patents and…
Discretionary Consideration Bars ReturnMail Side-Step Via Intervenor Last fall, I explained that the Patent Trial & Appeal Board (PTAB) was considering the relationship of government contractors in Court of Federal Claim (COFC) patent disputes against the…
PERSONAL AUDIO, LLC v. CBS CORPORATION Before Moore, Reyna, and Taranto. Appeal from the United States District Court for the Eastern District of Texas. Summary: The Federal Circuit has exclusive jurisdiction to hear a direct appeal of a PTAB’s final…
On December 11, 2019, the PTAB designated two additional decisions as “informative.” Such informative decisions are not binding on subsequent panels, but are meant to provide guidance on recurring issues encountered by PTAB panels in post-grant…
PTAB 2019: A Year of New Precedent There were a number of high profile developments at the Patent Trial & Appeal Board (PTAB) in 2019. New procedures for amending claims , Practice Guide updates to thwart parallel petition filings , a successful…
