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Precedential PTAB Decision Provides Reminder That PG Patent Review Is Barred By Prior Civil Action Challenging Validity

On November 15, 2013, SecureBuy, LLC, petitioned the US Patent and Trademark Office for review of U.S. Patent No. 7,051,002 under the America Invents Act’s transitional program for covered business method patents. Two weeks earlier, on November 1, 2014, SecureBuy had filed actions in two different federal district courts seeking a declaratory judgment of invalidity […]

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Inter Partes Review Barred by Real Party in Interest Requirement

The USPTO’s Patent Trial and Appeal Board (PTAB) has dismissed RPX Corporation’s multiple petitions for inter partes review (IPR) of four patents owned by Virnetx, Inc., holding that Apple, Inc., whose ability to bring the IPR petitions was time-barred, was the real party in  interest.  RPX Corp. v. Virnetx, Inc., Cases IPR2014-171 to 177 (PTAB […]

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Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions To Initiate Inter Partes Review

In In re The Procter & Gamble Company. LLC, No. 121 (Fed. Cir. Apr. 24, 2014), Clio filed a declaratory judgment action against Procter & Gamble (“P&G”), asserting three P&G patents were invalid.  After unsuccessfully moving to stay an already-pending P&G lawsuit for patent infringement against a Clio customer, Clio dismissed its complaint without prejudice […]

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Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions Not To Initiate Inter Partes Review

In In re Dominion Dealer Solutions. LLC, No. 109 (Fed. Cir. Apr. 24, 2014), Dominion petitioned the Patent Office Trial and Appeal Board (“PTAB”) to institute inter partes review of five patents.  The PTAB denied them all.  Dominion petitioned the Federal Circuit for a writ of mandamus.  Id. at 2. The Federal Circuit denied Dominion’s […]

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Federal Circuit Will Not Allow Appeals Of PTAB Decisions Not To Initiate Inter Partes Review

In St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014), St. Jude sued Volcano for patent infringement.  Volcano counterclaimed against St. Jude, asserting St. Jude was infringing a Volcano patent.  Two years later, the district court dismissed all claims against St. Jude relating to the Volcano patent.  Six […]

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PTAB Invalidates First Design Patent in Inter Partes Review

On April 22, 2014, the Patent Trial and Appeals Board (“PTAB”) ruled that a design patent claim in U.S. Patent No. D617,465 (the ‘465 Patent) is unpatentable as obvious.  Munchkin, Inc. v. Luv N’ Care Ltd., No. IPR2013-00072 at 2.  The PTAB’s decision comes less than a year after the proceeding was initiated, and is […]

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PTAB Finding of Invalidity Does Not Trump Federal Court’s Final Judgment

The Covered Business Method Patent review procedure created by the America Invents Act may be a powerful tool for attacking business method patents, but CBM cannot overcome all court proceedings, at least if Versata Software, Inc. v. SAP America, Inc., No. 2:07cv153-RSP (April 21, 2014), is any guide.  In this case, Magistrate Judge Payne held […]

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The America Invents Act for Non-Patent Lawyers

The America Invents Act, as every patent lawyer knows, makes significant changes to the practice of patent law in the United States.  Especially if you are not a patent lawyer, you may find helpful my recent article,  “Some Basics of the America Invents Act for Non-Patent Lawyers,” published in the August 2012 issue of the […]

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No Joinder Under AIA Just Because Accused Smartphones All Use Android

Different manufacturers’ use of the Android operating system in their respective smartphones did not arise out of the “same transaction or occurrence” under the joinder provision of the America Invents Act, 35 U.S.C. § 299.  Motorola Mobility, Inc. v. Apple Inc., nos. 1:12-cv-20271-RNS and 1:10-cv-23580-RNS, (S.D. Fla. July 31, 2012).  Accordingly, the court granted defendant […]

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