Posts Tagged: "inter partes review"

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential ruling that affirmed a district court’s denial of preliminary injunction to DexCom, Inc., holding that the language of the governing contract’s forum selection clause expressly allowed for the filing of inter partes review (IPR) proceedings in certain circumstances. DexCom and Abbott Diabetes Care, Inc. entered into a settlement and license agreement in 2014, following years of patent litigation over their competing glucose monitoring system patents. The governing agreement included a Covenant Period and a forum selection clause that DexCom argued was breached by Abbott’s filing of eight IPR petitions following the expiration of the Covenant Period and 10 months after DexCom filed an infringement suit against Abbott in the Western District of Texas.

On December 15, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision in ParkerVision, Inc. v. Vidal affirming the Patent Trial and Appeal Board’s (PTAB) invalidation of ParkerVision’s patent claim to down-converting electromagnetic (EM) signals in wireless communication networks. In so holding, the Federal Circuit upheld the PTAB’s use of claim construction conflicting with parallel proceedings in the Western District of Texas on the grounds that the patentee defined the term “storage element” as a lexicographer.

The U.S. Supreme Court yesterday denied a petition for writ of certiorari asking the Court to reconsider the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) June ruling that the petitioner said signals an expanding practice of reversing agency decisions in lieu of remand. In the CAFC’s decision, the court reversed a Patent Trial and Appeal Board (PTAB) judgment that affirmed patent claims in part due to the commercial success of MacNeil IP’s WeatherTech vehicle floor tray. The CAFC also affirmed a PTAB ruling that invalidated three claims of one of MacNeil’s patents in its battle with Yita LLC, a Seattle-based auto parts company.

An event held Monday by the Center for Strategic & International Studies (CSIS), and moderated by former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu, featured a number of high-profile political and professional figures in the intellectual property space debating approaches to strengthening the U.S. patent system, with an emphasis on national security. Representative Deborah Ross (D-NC), who serves on the U.S. House of Representatives’ Judiciary Committee’s Subcommittee on Courts, Intellectual Property and the Internet, first joined Iancu to discuss her reasons for supporting the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act.

Here we go again! We’ve heard the story in the past, which is sadly all too common. A patent owner prevails in federal district court, and also prevails at the Patent Trial and Appeal Board (PTAB) in an inter partes review (IPR) challenge, but somehow finds themselves still fighting an ex parte reexamination. How is this possible? Perhaps something will be done—this time—because the abusive, harassing challenger is Chinese company TikTok, who is seeking to invalidate the very same claims it failed to invalidate in an IPR that was denied institution on the merits.

It was a typical week for patent filings at the Patent Trial and Appeal Board (PTAB) with 25 new Patent Trial and Appeal Board (PTAB) petitions—all inter partes reviews (IPRs). Meanwhile, the district courts had a somewhat above average week with 76 new complaints filed.Meanwhile, the district courts had a somewhat above average week with 76 new complaints filed. At the PTAB, Hyundai filed two new IPRs against Mel Navip LLC [associated with Ni, Wang & Massand, PLLC] patents; Fortinet Inc. filed two IPRs against one Lionra Technologies [associated with Magnetar Capital] patent; and Apple filed two IPRs against DoDots Licensing Solutions [Strategic Intellectual Solutions] patents.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision today that the Patent Trial and Appeal Board (PTAB) does not lose its statutory authority to issue a Final Written Decision when it misses the 1.5-year deadline to do so, as established by the patent statute. According to the opinion, which was authored by Judge Dyk, “[t]his appears to be the only proceeding in which the Board has failed to meet the statutory deadline, and this is accordingly a matter of first impression.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision today affirming the Patent Trial and Appeal Board’s (PTAB’s) finding that Medtronic failed to prove the challenged claims of Teleflex’s catheter patent unpatentable. In several previous precedential decisions issued this year, the CAFC similarly upheld the PTAB’s determinations. In May, the court said that Medtronic failed to show the challenged claims of five catheter patents unpatentable because the primary prior art reference cited by Medtronic did not qualify as prior art under pre-America Invents Act (AIA) first-to-invent provisions. Judge Dyk dissented. And in June, the court found in two separate rulings issued the same day that Teleflex’s objective evidence supported a presumption of nexus, that Medtronic copied Teleflex’s product and that Teleflex’s substitute claims did not lack adequate written description.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal today designated as precedential a Patent Trial and Appeal Board (PTAB) decision from March of this year that held a precedential U.S. Court of Appeals for the Federal Circuit (CAFC) ruling on prior art determinations for provisional applications applies only to pre-America Invents Act (AIA) patents.

The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.

It was a typical week for patent filings at both the Patent Trial and Appeal Board (PTAB) and in district courts, with 25 new PTAB petitions (five post grant review and 20 inter partes review) and 53 new district court complaints filed. At the PTAB, there were three procedural denials under Section 325(d) (and denying patent owner’s request to deny under Fintiv) in IPRs filed by Nokia Corp. against optical networking patents owned by Alexander Soto and Walter Soto and asserted by inventor owned-NextGen Innovations, LLC.

The Senate Subcommittee on Intellectual Property held a hearing today featuring witnesses who weighed in on the Promoting and Respecting Economically Vital American Innovation Leadership (PREVAIL) Act, which was introduced in June by Senators Chris Coons (D-DE), Thom Tillis (R-NC), Dick Durbin (D-IL) and Mazie Hirono (D-HI). Today’s was the sixth hearing of the IP Subcommittee this year. The goal of the PREVAIL Act is to reform the Patent Trial and Appeal Board (PTAB) in a number of ways.

It was another slow week for patent filings at the Patent Trial and Appeal Board (PTAB) and a typical week in district courts, with 52 district court complaints filed and 22 new PTAB petitions. There was a new discretionary denial, a bunch of litigation-provoked high-profile PTAB challenges, and some notable new litigations. There was another Fintiv discretionary denial this week: here, a Chinese patent owner, Ningde Amperex Technology Ltd., benefited from the Board’s discretionary denial rules in a petition brought by another Chinese battery company. The case, IPR2023-00585, leaves unaddressed the questions raised about the validity of U.S. Patent 11329352.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal issued an Order last week in a sua sponte Director Review proceeding asking the parties to Spectrum Solutions LLC v. Longhorn Vaccines & Diagnostics, LLC and any interested amici to weigh in on the appropriate sanctions remedy when a party withholds evidence in an America Invents Act (AIA) proceeding.

On October 26, a panel majority of the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a pair of final written decisions at the Patent Trial and Appeal Board (PTAB) invalidating patent claims owned by Monterey Research and covering improved static random access memory (SRAM) cell designs. Dissenting from the majority was Circuit Judge Timothy Dyk, who believed that both the Board and CAFC panel majority erred by concluding that claim amendments made during reexamination did not differentiate the claims from asserted prior art references.