Posts Tagged: inter partes review


PTAB Procedural Reforms are Necessary to Restore Balance and Due Process

Under the current PTAB system, irreparable harm is occurring to patent holders. Conversely, virtually no harm will be done to petitioners by putting on the brakes. Charging …

SCOTUS to hear SAS Institute v. Lee, could impact estoppel effect of IPR proceedings

The nation’s highest court will once again address issues surrounding the controversial Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (…

CAFC may consider whether an inter partes reexamination was properly instituted based on the presence or withdrawal of a party

In re AT&T Intellectual Prop. II, L.P., Appellant AT&T Intellectual Property II, L.P. (“AT&T”) appealed from a final decision of the Patent …

Cisco Successfully Invalidates Patent for Lack of Written Description

Cisco challenged Cirrex’s patent via inter partes reexamination, asserting a lack of written description. The Board affirmed the Examiner’s findings, that the patent, as amended, …

PTAB Reversed for Failing to Explain the Basis for its Obviousness Decision

The Federal Circuit vacated and remanded the PTAB's decision in an inter partes review proceeding, finding the Board did not set forth its reasoning for finding the …

Statements Made by Patent Owner During IPR Can Support Finding of Prosecution Disclaimer

In the case of Aylus Networks, Inc. v. Apple Inc., the Federal Circuit affirmed the district court’s finding of summary judgment for Apple Inc. (“Apple”). The …

Federal Circuit demonstrates that even when you win at IPR you can still lose

In a rare IPR affirming patentability, the Patent Trial and Appeal Board (the “Board”) found claims of US Patent No. 6,945,013 to be patentable that were directed to …
By John M. Rogitz
11 days ago 1

En Banc Federal Circuit Dodges PTAB Constitutionality

Patlex, which dealt with reexamination of applications by an examiner — not by an Article I tribunal — could be considered a next step beyond McCormick. MCM, however, simply …
By Gene Quinn
12 days ago 38

America’s Patent System: Mediocre and stabilized in a terrible space

“The results from the Patent Trial and Appeal Board reflect the procedures it applies, and in my judgment the procedures are wildly off base,” Judge Michel explained... “…
By Gene Quinn
17 days ago 37

Is the ethical bar for practitioners higher than it is for PTAB judges?

Had APJ Clements not been a member of the PTAB and one of the patent owners – let’s say Smartflash for example – had come to him and …
By Gene Quinn
23 days ago 21

If PTAB judges can decide cases involving former defense clients USPTO conflict rules must change

If an APJ making decisions in a case within 18 months of having represented a former client complies with whatever USPTO conflict rules or guidelines apply to PTAB …
By Gene Quinn
24 days ago 11

Fundamental incongruities of PTAB operations affect the integrity of the patent system

For more than two centuries, the U.S. Constitution, black letter law and precedent construed a patent as a property right. This is important because it is …

Recent court rumblings about a narrow scope of IPR estoppel

An Inter Partes Review (IPR) is an important tool for companies that face frequent patent infringement challenges. An IPR is essentially a mini-litigation focusing solely on patent …
By Mitchell Feller
28 days ago 2

The Top 3 Reasons the U.S. Patent System in Decline

Concerns over software and biotechnological innovations being patent eligible, the omnipresent threat of patent reform that could make it even more difficult to enforce the patent property …
By Gene Quinn
1 month ago 19

Why the Unified Patents Model Would Not Work in China

Unified Patents is a relatively new form of patent troll that works as a “Troll of Trolls” or “ToT.” They file IPRs (inter-partes reexamination requests) to kill …
By Erick Robinson
1 month ago 18