In Apple, Inc. v. ContentGuard Holdings, Inc., the PTAB denied the Petitioner’s IPR petition because it did not “focus on concise, well-organized, easy-to-follow arguments supported by readily identifiable evidence of record,” but instead was a “repository of all the information
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.
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PTAB considers a copyright notice to be evidence of publication
In LG Electronics, Inc. v. Advanced Micro Devices, Inc., the PTAB held that a copyright notice in a cited reference was evidence of publication as of the copyright date. The PTAB also held that a date without a copyright notice…
Federal Circuit confirms that statutory bar defense to AIA proceedings is not subject to waiver
In GTNX, Inc., v. Inttra, Inc., — F.3d —, 2015 WL 3692319 (Fed. Cir. June 16, 2015), the Federal Circuit held that a Patent Owner’s failure to invoke the statutory bar set forth in 35 U.S.C. § 325(a)(1) prior to…
Federal Circuit addresses use of BRI standard and motions to amend claims in IPRs
In Microsoft Corp. v. Proxyconn, Inc., — F.3d —, 2015 WL 3747257 (Fed. Cir. June 16, 2015), the Federal Circuit once again affirmed that the broadest reasonable interpretation (“BRI”) standard of claim construction applies in IPRs, providing further guidance…
PTAB confirms IPR petitions cannot be time-barred based on ITC complaint
Under 35 U.S.C. § 315(b), a petitioner, real party in interest, or privy of the petitioner has only one year after service of a complaint alleging infringement to request inter partes review of the patent-in-suit. In LG Electronics, Inc. v.…
Judicial review of PTAB institution decisions: When one door closes, another opens
In a group of recent decisions the Federal Circuit held that it lacks jurisdiction to review the PTO’s decision to institute both IPR and CBM proceedings. However, with regard to CBM proceedings, the Court appears to have created a potential…
PTAB confirms that estoppel does not bar subsequent petitions on non-instituted claims
In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB denied a Patent Owner’s motion to terminate a CBM proceeding, holding that estoppel under 35 U.S.C. § 325(e)(1) does not apply to claims previously denied institution. CBM2014-00176, Paper 28 (May 14…
PTAB denies motion seeking cross-examination of inventor, finding that patent specification is not “affidavit testimony”
In Westlake Services, LLC v Credit Acceptance Corp., Petitioner was denied authorization to file a motion to compel the deposition testimony of the named inventor for the patent under review. CBM2014-00176, Paper 29 (May 18, 2015).
Although Patent Owner…
PTAB holds patent CBM-eligible because of its application in the banking industry
In a recent CBM institution decision, the PTAB held at least one claim in the challenged patent was directed to a financial product or service because the claimed invention has application in the banking industry. Informatica Corp. v. Protegrity Corp., CBM2015-00010…
PTAB confirms that it lacks authority to stay prosecution of related applications
In Chums, Inc. and Croakies, Inc. v. Cablz, Inc., the PTAB denied Petitioner’s request to file a motion to suspend prosecution of patent applications that were related to the patent that was the subject of the IPR proceeding. IPR 2014-01240…