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On February 22, 2018, the U.S. Court of Appeals for the Federal Circuit issued a non-precedential decision in Google, LLC v. At Home Bondholders’ Liquidating Trust (2016-2727, 2016-2729).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