The Patent Trial and Appeal Board (PTAB) recently granted a rare request for rehearing in an inter partes review.  See Shopify, Inc. et al. v. DDR Holdings, LLC, IPR2018-01012, Paper 35 (Oct. 26, 2020). Shopify had challenged DDR Holding’s U.S. Patent No. 9,043,228. In a mixed Final Written Decision (FWD), the PTAB initially found claims 1, 3, 7-9, 11, 15, and 16 obvious over the cited prior art. Administrative Patent Judge DeFranco dissented from the…

This Thanksgiving season, patent practitioners can be thankful for a Federal Circuit opinion clarifying how the Court considers evidence of public accessibility of references asserted in an inter partes review.  See VidStream LLC v. Twitter, Inc., Appeal Nos. 2019-1734, 2019-1735 (Fed. Cir. November 25, 2020). Read more…

In an order issued on September 28, 2020, the Federal Circuit denied Sand Revolution’s petition for writ of mandamus. In re Sand Revolution LLC, No. 2020-145, 2020 WL 5757591, at *1 (Fed. Cir. Sept. 28, 2020). In its petition, Sand Revolution urged the Federal Circuit to direct the District Court for the Western District of Texas to vacate its order denying a litigation stay and enter an order staying the litigation pending resolution of a…

In In-Depth Geophysical, Inc. v. ConocoPhillips Co., IPR2019-00850, Paper 56 (Sept. 3, 2020), the Board reaffirmed that the grounds for unpatentability and the evidence supporting those grounds must be provided in the Petition itself, and that new arguments may not be raised in a party’s sur-reply brief.  Specifically, the Board denied the Petitioner’s motion to supplement its expert declaration after institution with additional testimony regarding reasons to combine, and refused to consider the Patent Owner’s…