Nothing has dominated the U.S. Patent and Trademark Office (PTAB) world like the Arthrex decision. Since October 2019, we have posted seven times about Arthrex and its progeny decisions. Now comes more.
On October 13, the U.S. Supreme Court granted
PostGrant-Counsel Blog
The PostGrant-Counsel Blog, published by Troutman Pepper Locke, focuses on legal developments and procedural issues related to post-grant patent proceedings before the U.S. Patent and Trademark Office (USPTO). It covers topics such as inter partes review (IPR), post-grant review (PGR), patent eligibility under Section 101, estoppel effects in IPRs, evidentiary standards for printed publications, and administrative patent judges' appointments. The blog analyzes key court decisions, USPTO guidance, and statutory interpretations affecting patent validity challenges and amendments during post-grant processes.
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IPR Estoppel Is Limited for Joinder Parties
By John Isacson
Network-1 Technologies, Inc. v. Hewlett-Packard Co., Appeal Nos. 2018-2338, -2339, -2395, -2396 (Fed. Cir., September 24, 2020).
Hewlett-Packard (HP) joined an IPR instituted by Avaya against Network-1’s ‘930 patent. HP only sought inter partes review on the grounds asserted by…
The Director’s Guidance on Applicant Statements
By John Isacson
USPTO Director Andrei Iancu recently issued a memorandum to the PTAB titled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Review under § 311.” Relying on Section 311, the memorandum permits the use of Applicant…
Printed Publications in Post-Grant Reviews
By John Isacson
GRÜNENTHAL GMBH v. ANTECIP BIOVENTURES II LLC, PGR2019-00026, -00027, 00028 (PTAB, July 28, 2020)
The PTAB issued decisions in a trio of post-grant reviews. One of the defenses put forward by the Patent Owner was that the asserted references did…
Section 101 Plays a Role in IPRs
By John Isacson
Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc., Appeal No. 2019-1686 (Fed. Cir., July 22, 2020).
Uniloc owned a patent entitled “System and Method for Adjustable Licensing of Digital Products.” In an IPR, petitioners Hulu and Netflix successfully challenged Uniloc’s…
IPR Decisions Are to Rely on the Adversarial Process
By John Isacson
Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, IPR2018-00600 (July 6, 2020)
Designated Precedential on July 6, 2020
Petitioner Hunting Titan challenged Patent Owner Dynaenergetics’ claims based upon anticipation and obviousness. During the trial, Patent Owner filed a motion to present…
There Is No Exception From Arthrex For Ex Parte Proceedings
By John Isacson
In re Boloro Global Ltd., Appeal Nos. 2019-2349, -2351 and -2353 (Fed. Cir., July 7, 2020).
Boloro appealed to the PTAB final rejections in three patent applications, which the PTAB ultimately affirmed. On appeal of the PTAB decisions to the…
The Obligation to Submit Agreements in IPRs Is Broad
By John Isacson
DTN, LLC v. Farms Technology, LLC, IPR2018-01412, -01525 (June 14, 2019)
On June 11, 2020, the PTAB designated as precedential its 2019 decision in DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of the obligation to file…
GE Denied
By John Isacson
General Electric Co. v. Raytheon Technologies Corporation, fka United Technologies Corporation, Case No. 19-1012.
On February 24, 2020, we reported on GE’s petition for certiorari to the Supreme Court. The petition sought review of the Federal Circuit’s doctrine on Article…
Proposed PTAB Rule Changes
By John Isacson
On May 27, 2020, the Federal Register published proposed rule changes to trial procedures before the PTAB. The rule changes address and codify the following:
(1) Institution will be on all challenged claims or none, and on all asserted grounds…