Posts Tagged: inter partes


SCOTUS says Patents are a Government Franchise, Not a Vested Property Right

While there has been much optimism due to the arrival of USPTO Director Andrei Iancu and his recent speeches signaling he understands the U.S. patent system …
By Gene Quinn
16 hours ago 13

PTAB challenges are a costly, uphill battle for patent owners

Often, a PTAB proceeding is threatened by an accused infringer to successfully settle the dispute with the patent owner. Often, no PTAB petition is ever filed. When …
By Rob Sterne
3 days ago 27

Doubling Down on Double Adjudication – the MerchSource post-issuance review model

Imagine this: you become aware of a patent that might cover your products, so you reach out to the patentee to secure a license agreement. After negotiating …
By Melissa Brand & Hans Sauer
23 days ago 6

Conclusory approach to obviousness by PTAB in IPR insufficient to render claims invalid

The Federal Circuit found that the Board failed to provide sufficient explanation for its obviousness finding, instead using a conclusory approach that asked whether the missing limitation …

Mohawk Tribe wins stay from Federal Circuit in sovereign immunity fight

The Federal Circuit issued an Order staying further proceedings at the PTAB relating to the RESTASIS patents now owned by the Saint Regis Mohawk Tribe. The stay …
By Gene Quinn
28 days ago 4

Controversy Over Restasis Patents is Misplaced

Competitors like Mylan and Teva, rather than inventing better treatments or cures for dry eyes chose the shortcut. They attacked Allergan’s patent in the PTAB. Allergan …
By Josh Malone
1 month ago 6

Mohawk Tribe Ready to Battle over Ex Parte Communications between PTAB Judges

Attorneys for the Mohawk tribe have notified the USPTO that ex parte communications between an APJ assigned to the IPRs and an APJ not assigned to the …
By Gene Quinn
1 month ago 107

PTAB Chief Judge defends APJs as having extensive legal experience

The USPTO has provided us with a comment from Chief Judge David Ruschke, who defends APJs of the PTAB as having extensive legal and technical experience. The …
By Gene Quinn
2 months ago 93

Debunking the IPR Myth of Nominal Impact to Overall Costs

When a court stays a litigation and an IPR results in a settlement, adverse judgement invalidating all claims, or a final decision invalidating all claims, then the …
By Gau Bodepudi
2 months ago 2

A Google Opponent Actually Wins an IPR Battle with the Tech Giant

On February 22, 2018, the U.S. Court of Appeals for the Federal Circuit issued a non-precedential decision in Google, LLC v. At Home Bondholders’ Liquidating Trust (2016-2727, 2016-2729). …
By John M. Rogitz
2 months ago 0

Prosecution Disclaimer 101: Argument relied upon by examiner results in prosecution disclaimer

The PTAB found the claims in question obvious for two reasons. First, in its primary ruling the PTAB held that there was no prosecution disclaimer, finding the "…
By Gene Quinn
2 months ago 2

PTAB Trial Practice After Wi-Fi One: Challenges and Opportunities

On January 8, 2018, the United States Court of Appeals for the Federal Circuit issued its long-awaited en banc decision in Wi-Fi One LLC v. Broadcom Corporation. This decision …
By Gene Quinn
2 months ago 0

How Patent Owners Can Disqualify Prior Art References Relied Upon by Petitioner for Unpatentability

To request cancellation of one or more claims of a patent in an inter partes review (IPR), a petitioner must challenge the claim on the basis that …
By Joshua Javitz
2 months ago 10

Do Recent Decisions Signal a Change in Patent Owner’s Rights to Defend and Amend Claims in Post-Grant Proceedings?

Ever since the introduction of AIA post-grant proceedings, many have questioned whether the procedural deck is stacked against patent owners.  Limits on making claim amendments, having to …
By David Thibodeau
3 months ago 7

Disclaimer Before Institution of IPR Results In Adverse Judgment And Estoppel

A disclaimer of challenged patent claims before an IPR is instituted may result in a final adverse judgment against the patent owner, triggering estoppel provisions that preclude …