In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB denied a Patent Owner’s request for authorization to file a motion to terminate. IPR2014-00176, Paper 41 (Sept. 3, 2015). In so ruling, the Board made it clear that standing
Patent Challenges
Analysis of USPTO post-issuance proceedings
The Patent Challenges blog, published by Norton Rose Fulbright, focuses on legal developments and strategic considerations related to patent validity disputes, including inter partes review (IPR) proceedings and patent litigation. It covers topics such as estoppel issues in patent challenges, claim construction standards, expert testimony in patent trials, and Federal Circuit decisions impacting patent scope and obviousness. The blog also addresses procedural aspects of patent trials before the Patent Trial and Appeal Board (PTAB), including rule changes and discretionary denials. It provides analysis of how patent law principles apply to technical fields like multiprocessor systems and digital assets, offering insights into patent enforcement and defense strategies.
Latest from Patent Challenges - Page 5
A Prima Facie Case Is Not Required for Institution
In Nestlé Purina Petcare Co. v. Oil-Dri Corp. of America, the PTAB held that the “reasonable likelihood” standard for institution of trial does not require that the Petitioner establish a prima facie case of unpatentability. IPR2015-00737, Paper 16 (Sept. 23…
PTAB Declines to Sanction Petitioner Based on Alleged “Profit Motive”
In Coalition for Affordable Drugs VI, LLC v. Celgene Corp., a six-judge panel denied a Patent Owner’s Motion for Sanctions against a Petitioner allegedly using IPRs to attack the Patent Owner’s primary product lines in an apparent attempt to deflate…
PTAB confirms that assignor estoppel does not apply in IPRs
The PTAB recently confirmed that the doctrine of assignor estoppel does not apply to IPR proceedings. Esselte Corp. v. Sanford L.P., IPR2015-00771, Paper 13 (Aug. 28, 2015). Assignor estoppel is an equitable doctrine that generally prohibits an assignor of…
PTAB refuses to terminate CBM on alleged mootness grounds
In Allscripts Healthcare Solutions, Inc. v. MyMedicalRecords, Inc., a Patent Owner requested termination of an instituted CBM as moot based on a final judgment in an underlying District Court case. CBM2015-00022, Paper 20 (August 26, 2015). The PTAB, in…
Motion to exclude is “improper vehicle” to challenge qualification of prior art under § 102(b)
In Chicago Mercantile Exchange Inc. v. 5th Market, Inc., the PTAB issued a Final Written Decision finding the challenged claims unpatentable as obvious over two references. CBM2014-00114, Paper 35 (Aug. 18, 2015). In doing so, the Board provided guidance…
PTAB cautiously authorizes motion to disqualify expert
In Agila Specialties Inc. v. Cephalon, Inc., the PTAB provided guidance on seeking the disqualification of an expert. Although the Board authorized the Patent Owner to file a Motion to Disqualify the Petitioner’s expert on the basis of an alleged…
PTAB offers Patent Owners a “sense of comfort” in making motions to amend
Much discussion has followed the PTAB’s June 11, 2013 opinion in Idle Free Systems, Inc. v. Bergstrom, Inc., IPR2012-00027, Paper 26. The main controversy has been the language included in the opinion stating that in motions to amend, the…
PTAB does not have jurisdiction in IPRs to review procedural issues from the original prosecution
In Samsung Electronics Co. v. E-Watch, Inc., the PTAB rejected an IPR Petitioner’s attempt to challenge the correctness of the USPTO’s decision on a Petition to Revive during the original prosecution. IPR2015-00612, Paper 8 (Jul. 8, 2015).
The Petitioner…
PTAB institutes IPR based on prior art that was previously presented to the USPTO
Under 35 U.S.C. § 325(d), the PTAB “may take into account whether, and reject [a] petition or request because, the same or substantially the same prior art or arguments previously were presented to the Office.” In Microsoft Corp. v. Parallel Networks Licensing, LLC,…