Posts Tagged: "IPR"

CAFC Says Forum Selection Clause in NDA Does Not Apply to Inter Partes Review

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held in a precedential decision authored by Judge Chen that a non-disclosure agreement’s (NDA’s) forum selection clause barring lawsuits to be brought outside of the New York court system did not apply to inter partes review (IPR) proceedings at the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Judge Newman dissented. Kannuu Pty Ltd. appealed to the CAFC asking that the court compel Samsung Electronics to seek dismissal of its instituted IPR proceedings at the PTAB seeking to invalidate Kannuu’s patents. Kannuu’s appeal was based on the terms of an NDA entered into between the companies during business negotiations in 2012.

Patent Filings Roundup: Uniloc (Fortress) Waves White Flag; IP Edge Files Dozens of Complaints to Start Third Quarter; Joao NPE Sues Texas Border Health Clinic, Withdraws

The third quarter came in like a wrecking ball, with district court patent filings spiking to 121 (roughly double average, driven entirely by a huge 48-complaint dump by IP Edge subsidiaries); Patent Trial and appeal Board (PTAB) filings were steady at 28, all  inter partes reviews (IPRs). A pattern seems to be emerging from IP Edge of a spike in settlements and terminations at the end of a fiscal quarter, followed by another round of filings when the next quarter starts. IP Edge is on pace to break the records it previously held for most complaints by a set of related entities in a calendar year. The Board denied another case under their Section 314(d) Fintiv discretion in light of an International Trade Commission (ITC) case, noting that, as “the ITC is scheduled to complete its investigation approximately seven-and-a-half months before the due date for the final written decision, this factor weighs in favor of exercising our discretion to deny institution.”

Report: Top IPR Law Firms of 2021

The annual IPR Intelligence Report evaluates all stakeholders in Inter Partes Review (IPR) proceedings each year. Here, we will reveal some of the best law firms involved in the 7,582 IPR challenges filed during the period of the study. In order to have a meaningful comparison, as well as compensating for the time required for each case from filing to completion (e.g. 6 to 18 months), we covered a period of five years, from July 1, 2016 through June 30, 2021, using the latest updates for the cases as of August 20, 2021. During this period, a total of 7,582 IPRs were filed to challenge 5,087 unique patents and 80,831 unique claims. Nine-hundred and thirty law firms and a total of 5,341 attorneys represented 2,658 companies involved in one or more IPRs as patent owners or petitioners.

CAFC Reverses PTAB Win for St. Jude, Finding Snyders’ Heart Valve Claims Not Unpatentable

On October 5, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed a decision by the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) that Snyders Heart Valve LLC’s (Snyders) patent claims for an artificial heart valve were unpatentable. The court said the PTAB relied on an erroneous claim construction. The CAFC previously vacated and remanded the appeal after only reaching Snyders’ argument under the Appointments Clause following its decision in Arthrex, Inc. v. Smith & Nephew, Inc. The U.S. government sought certiorari to challenge the remand, and after its decision in United States v. Arthrex Inc. (U.S. Supreme Court, 2021), the Supreme Court vacated the decision of the CAFC and remanded the matter back. Snyders waived the Appointments Clause challenge and asked the CAFC to consider the merits of the case on remand.

Patent Filings Roundup: Board Shirks SAS Institute, Defunct Jawbone Entity Sues Big Tech, and Gaming Industry Targeted in California Court

A normal filing week saw 27 new petitions, all inter partes reviews (IPRs), and 54 district court patent filings, a fair number related to a few new Leigh Rothschild campaigns, some pharma suits, and others. For whatever reason (one would assume, end of the quarter), an unusual number (hundreds) of non-practicing entity (NPE) suits terminated last week, at least against some defendants. More on a handful of cases below.