Analysis of patent litigation, PTAB practice, prosecution and pharma IP, written on the data behind LexDana.
Tagged inter partes review · clear
Written by Benjamin Anger and Mark Rubinshtein, Ph.D. A magistrate judge in the Eastern District of Texas recommended in Network-1 Technologies, Inc. v. Alcatel-Lucent USA, Inc. Case No. 6:11-cv-492 (E.D.Tex. September 25, 2017) that Hewlett-Packard…
Written by Benjamin Anger and David T. Kim The PTAB’s Chief Administrative Patent Judge and Deputy Chief Administrative Patent Judge joined an expanded PTAB panel that adopted the seven NVIDIA factors and denied institution of the Petitioner’s…
Written by Peter Law and Kerry S. Taylor, Ph.D. September 16, 2017 marked five years since the Patent Trial and Appeal Board (PTAB) was created. Some of the notable statistics and trends of the previous 5 years are shown here. As of September 18, 2017,…
Written by Clayton R. Henson and Kerry S. Taylor, Ph.D. On July 28, 2017, the PTAB issued a final written decision holding all claims unpatentable in an IPR after the Fed. Cir. vacated and remanded the PTAB’s previous final written decision. On…
Article III Standing Only Necessary for Party Invoking Authority of Federal Courts Last week, I analyzed the government's arguments supporting Article III standing for intervenors in Knowles Electronics v. Matal. In that case, the panel questioned…
Assignor Estoppel Not an Exception to 311(a) The Patent Trial & Appeal Board (PTAB) has designated the following decision as precedential: Athena Automation Ltd v. Husky Injection Molding System Ltd., IPR2013-00290, Paper 18 (PTAB Oct. 25, 2013), Section…
Written by Peter Law and Kerry Taylor, Ph.D. The PTAB has again addressed sovereign immunity in the context of an IPR. Reactive Surfaces, LTD. petitioned for IPR of U.S. Patents No. 8,394,618 and 8,252,571. The ’618 and ’571 patents are…
Failure to Argue Differing Claim Language of Similar Claims Haunts Appellant PTAB practitioners must always be mindful of the Board's longstanding practice to treat grouped claims as standing or falling together. That is, claims should be argued…
Patent Owner Sur-Replies on the Uptick Back in June of 2016, the Federal Circuit issued its opinion in Genzyme Therapeutic Products LP v. BioMarin Pharmaceutical Inc.( here ). At the time I explained that Genzyme was a game-changer . This was because it…
"Closely Tied" Language of Cuozzo & Institution-Centric Statutes The en banc opinion on the scope of the AIA's appeal bar (35 U.S.C. §§ 324(e)/314(d)) remains outstanding in WiFi One . Still, we have seen a few opinions from the…
High Court to Review Constitutionality of AIA Trials The Supreme Court has had at least three occasions over the past 7 months to review the constitutionality of AIA trial proceedings — it declined all three invitations. Thus, the writing appeared to…
Preliminary Responses Accompanied by Declaration Evidence: Updated Results Back on May 1st of 2016, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses. The PTAB implemented this change to…
