Posts Tagged: "inter partes"

Parlor Tricks and Shell Games: How the Invisible Hand of the PTAB Supports Challengers

After dissenting APJ James Arpin was mysteriously and without explanation removed from the case, replaced by APJ Thomas Giannetti. Perhaps there is an innocent explanation for what happened here, but in the secretive, backroom world of the PTAB innocent explanations are becoming harder and harder to envision. And, frankly, given how the PTAB has run amok for so long the tribunal has lost any legitimate claim to the benefit of doubt. If there is nothing nefarious going on, then why is it that the patent owner always seems to be on the wrong end of these procedural irregularities? Why is it that the invisible hand of the PTAB always winds up on the side of the scale that takes patent rights away?

Federal Circuit Dismisses PTAB Appeal Because Appellant Fails to Prove Injury-In-Fact for Standing

On Friday, August 3rd, the Court of Appeals for the Federal Circuit issued a precedential decision in JTEKT Corporation v. GKN Automotive, which dismissed an appeal stemming from a trial conducted at the Patent Trial and Appeal Board (PTAB) where two of seven challenged claims were upheld as not unpatentable. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Timothy Dyk and Kathleen O’Malley found that appellant JTEKT lacked the standing required to appeal the case because it couldn’t prove an injury-in-fact required for standing.

PTAB Judgment for Patent Owner Reversed, GoPro Catalog is Prior Art

On Friday, July 27th, the Court of Appeals for the Federal Circuit issued a precedential opinion in GoPro, Inc. v. Contour IP Holdings, vacating a final written decision coming from the Patent Trial and Appeal Board (PTAB) that had upheld patent claims in the face of a validity challenge petitioned by action camera company GoPro. The Federal Circuit panel of Circuit Judges Jimmie Reyna (author of the opinion), Evan Wallach and Todd Hughes found that the PTAB had erred in finding that a 2009 GoPro catalog did not qualify as a prior art printed publication for rendering the challenged claims invalid for obviousness.

More Bites at the Apple?

After TCL lost its IPRs against Ericsson in a written decision at PTAB, it was barred from filing subsequent IPRs against the ‘510 patent.  TCL was then hit with a very large verdict for infringement of the patent in court. Then, four months after the verdict the same patent is challenged at the PTAB again by a consortium that has some relationships to TCL.

Trade Secrets: Contempt proceedings put miscreant in jail for failure to provide information about misappropriation

Generally, a breach of confidence under English law does not give rise to criminal liability (and the recently implemented Trade Secrets Directive only addresses civil remedies for misappropriation of trade secrets). Sometimes the conduct giving rise to the breach may constitute an offense in its own right (for example an offense under the Computer Misuse Act 1990) but in the absence of such a scenario sanctions will be limited to inter partes remedies. However, as recently seen, if an order for inter partes relief is breached, criminal sanctions may still be imposed following a finding of contempt of court.