In Husky Injection Molding Systems Ltd., v. Athena Automation LTD., Nos. 2015-1726, 2015-1727 (Sept. 23, 2016), the Federal Circuit rejected Husky’s appeal of a PTAB inter partes review decision that certain challenged claims were invalid. Husky’s grounds for appeal were based not on the PTAB’s final decision finding anticipation of the claims, but on an […]
Archive | Inter Partes Review
A Federal Circuit Reminder on the Limits of Obviousness
The circumstances are few in which “common sense” can substitute for a claim limitation missing from the prior art in an obviousness rejection under 35 U.S.C. § 103, the Federal Circuit explained in Arendi S.A.R.L. v. Apple, Inc., No. 2015-2073 (Fed. Cir. Aug. 10, 2016) (opinion by Judge O’Malley, joined by Judges Linn and Moore). […]
Federal Circuit Vacates PTAB Written Decision in IPR For Inadequate Explanation of Invalidity Holding
In a non-precedential opinion, Cutsforth, Inc. v. MotivePower, Inc., No. 15-1316 (Fed. Cir. Jan. 22, 2015), the Federal Circuit criticized the Patent Trial and Appeal Board (PTAB) for failing to explain its obviousness rejection of U.S. Patent No. 7,990,018, which is directed to a removable brush holder. The Federal Circuit vacated and remanded the decision back […]
PTAB Grants Request for Re-hearing from Denial of Petition to Institute Inter Partes Review
Requests to the Patent Trial and Appeal Board for rehearing of decisions on Petitions for Inter Partes Review are commonplace. PTAB decisions summarily denying them are as well. In AVX Corporation v. Greatbatch, Ltd., IPR2015-00710, Paper 13 (Jan. 13 2016), however, a Petitioner succeeded in convincing a PTAB panel to reverse itself (in part) on […]
USPTO Holds First-Ever Inter Partes Review Hearing in Midwest Regional Office in Detroit
Back in 2012, the U.S. Patent and Trademark Office officially opened its first satellite Office—the Midwest Regional Office—in Detroit, Michigan. In another first for the Detroit Regional Office, on January 11, 2016, the Office conducted the first oral hearings in an inter partes review proceeding outside of the Patent Office’s Alexandria, Virginia headquarters. A few […]
Broadest Reasonable Interpretation Has Limits
Every patent practitioner has felt the frustration that the USPTO’s “broadest reasonable interpretation” standard for claim construction seems to mean that claims say whatever the Patent Office wants them to mean. However, the Federal Circuit has reaffirmed that the standard does have limits. In Straight Path IP Group, Inc. v. Sipnet EU S.R.O., No. 15-1212 […]
No Stay When Inter Partes Review Not Yet Instituted
By Charles Bieneman on August 15, 2015 in America Invents Act, Civil Procedure, Inter Partes Review, Stays
Where the Patent Trial and Appeals Board (PTAB) had not yet ruled on a petition for Inter Partes Review (IPR), a U.S. District Court denied a defendant’s motion for a stay pending completion of the IPR. Seymour Levine v. The Boeing Co., No. 14-1991RSL (W.D. Wash. July 29, 2015). The court was swayed by the […]
PTAB Denies a Petition for Inter Partes Review for Petitioners Failing to Identify All Real Parties-in-Interest
In Paramount Home Entertainment Inc. v. Nissim Corporation, IPR2014-00961, the Patent Trial and Appeal Board (“PTAB”) denied a Petition to institute inter partes review of claims 1-5 of U.S. Patent No. 6,304,715 (“the ‘715 patent”), ruling that the Petition failed to identify all real parties-in-interest as required by 35 U.S.C. § 312(a)(2). The December 29, […]
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 […]