Latest from PTAB Law Blog - Page 2

In 2017, Cytonome filed suit in the Western District of Wisconsin (“the District Court”), accusing ABS of infringing six of its patents, including US Patent No. 8,529,161 (“the ’161 patent”). Subsequently, in October 2017, ABS filed for inter partes review (“IPR”) of the ’161 patent, and the Patent Trial and Appeal Board (“the Board”) issued a decision in April 2019 that invalidated certain claims of the ’161 patent while also finding that ABS had failed…
In 2017, Twitter, Inc. (“Twitter”) filed two petitions requesting inter parties review (“IPR”) of U.S. Patent No. 9,083,997 (“the ’997 patent”), with the first petition directed to claims 1-19 and the second petition directed to claims 20-35. The Patent Trial and Appeal Board (“the Board”) issued two substantially similar Final Written Decisions (IPR2017-00829, IPR2017-00830) that found all claims of the ’997 patent unpatentable as obvious. The ’997 patent’s assignee, VidStream LLC (“VidStream”), appealed to the…
On November 9, 2020, the Federal Circuit vacated and remanded a decision by the United States Patent Office Patent Trial and Appeal Board (“PTAB”) in Donner Tech., LLC v. Pro Stage Gear, LLC,[1] holding that the PTAB applied an incorrect standard to determine whether a reference in the case was analogous art.  While the Court’s decision did not resolve whether the reference was in fact analogous art, it reiterated the two-part test defining the…
On October 20, 2020, the United States Patent and Trademark Office (“USPTO” or “Office”) published in the Federal Register “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” seeking public comments on the appropriate considerations for instituting trials before the Patent Trial and Appeal Board (“PTAB”) under the Leahy-Smith America Invents Act (“AIA”). 85 FR 66502. As explained in the Federal Register, even in cases where a petitioner…
In In re: Google Technology Holdings LLC, No. 2019-1828 (Fed. Cir. Nov. 13, 2020), the Federal Circuit elaborated on the policies underlying waiver and forfeiture of appellate arguments.  Ultimately, the court affirmed the Patent Trial and Appeal Board’s (“the Board”) obviousness rejections of the claims at issue because Google had forfeited the arguments it raised on appeal. Google’s Patent Application No. 15/179,765 is directed to distributed caching for video-on-demand systems.  The examiner rejected the claims…
Moderna, one of the global leaders in developing a safe and effective vaccine to combat COVID-19, appears poised to get through clinical trials with a vaccine that is based on mRNA technology. As was recently announced, Pfizer demonstrated a 90% effectiveness with its vaccine, which is also based on mRNA technology. If all stays on course, Pfizer and Moderna may be the first two market entrants with vaccines, using the non-traditional mRNA technology. But in…
A motion recently filed by US Inventor, Inc. in the United States District Court for the Northern District of California seeks a temporary restraining order and a preliminary injunction to prevent the United States Patent and Trademark Office (“USPTO” or “Patent Office”) from instituting any new reviews of any patent until it solves the debate over the “NHK-Fintiv rule” by promulgating a rule under the proper notice-and-comment procedure of the American Procedure Act (“APA”).  US…
On October 6, 2020, the United States Patent and Trademark office (USPTO) released a report titled “Public Views on Artificial Intelligence and Intellectual property Policy.”  The report follows the USPTO’s August 2019 request for comments on patenting AI inventions, and the USPTO’s October 2019 request for comments related to the impact of AI on other IP policy areas. A few general themes emerged from the nearly 200 submissions, including “the fact that…
The Federal Circuit reconfirmed its interpretation of the IPR joinder rules of 35 U.S.C. § 315(c) after the panel’s rehearing in Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400, 2020 WL 5267975 (Fed. Cir. Sept. 4, 2020).  Appellant Facebook, Inc. had filed a combined request for panel rehearing and rehearing en banc.  The rehearing en banc was denied, but the panel granted the panel rehearing to the extent that it replaced its original precedential…
Last week, Microsoft got tripped up at oral argument on the blocking and tackling of IPR practice:  making sure your prior art is prior art. The specific error was eminently avoidable, though perhaps also eminently understandable. Under Federal Circuit law, a reference generally does not count as prior art unless it was “indexed.” (Think Dewey Decimal system, or the USPTO’s classification system). To clear this “indexing” hurdle, Microsoft found a document that helpfully titled itself…