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Recent Decisions (click on a decision to view the annotation)

PTAB Digest

Arista Networks, Inc. v. Cisco Systems, Inc.

Board denied institution because the primary reference of a combination had been presented, alone, in a previously denied petition and because inclusion of the secondary reference was an attempt at bolstering guided by the previous decision.
PTAB Digest

Snap-on Inc. v. Milwaukee Elec. Tool Corp.

Board held Patent Owner failed to show good cause to compel requested discovery because Patent Owner showed no more than a possibility that something useful would be discovered and because the request was overly burdensome.
PTAB Digest

Palo Alto Networks, Inc. v. Finjan, Inc.

After consolidating two IPR petitions addressed to the same patent, the first covering independent claims, and the second covering dependent claims, the Board granted request to increase response and reply word counts by 50%.
PTAB Digest

Instradent USA, Inc. v. Nobel Biocare Servs. AG

Board granted in part a request for additional discovery. It denied interrogatories as too broadly written but allowed some requests for production. 
PTAB Digest

Hilti, Inc. v. Milwaukee Elec. Tool Corp.

Board increased word count for Petitioner's Reply by 10%, in-part because Board allowed Patent Owner 1 page of supplemental briefing.
PTAB Digest

Hilti, Inc. v. Milwaukee Elec. Tool Corp.

Board ordered production of some documents while denying Petitioner's request to discover evidence of inventorship to rebut secondary indicia, because a nexus between marketed product and claimed invention may exist regardless of inventorship. 
PTAB Digest

Automotive Data Solutions, Inc. v. Aamp of Florida, Inc.

Board held patent was not entitled to filing date of provisional or intervening parent applications where those applications did not satisfy the the written description requirement of 35 U.S.C. § 112.
PTAB Digest

Snap-On Inc. v. Milwaukee Elec. Tool Corp.

Board authorized Petitioner to file motions for additional discovery. It also authorized Petitioner to apply for a district court subpoena to a third party.
PTAB Digest

IBG LLC v. Trading Techs. Int'l, Inc.

Board declined to waive Federal Rules of Evidence 802 (hearsay) and 901 (authenticity) for documents produced and used as trial exhibits in previous litigation, because Patent Owner failed to establish basis and Petitioner would be prejudiced.
PTAB Digest

SK Hynix Inc. v. DSS Technology Management, Inc.

The Board denied institution on anticipation grounds because Petitioner's invalidity proof relied on elements from different embodiments instead of identifying all of the elements in a single embodiment.
PTAB Digest

Hospitality Core Services, LLC v. Nomadix, Inc.

Board holds that Petitioner failed to meet its burden of making at least a preliminary showing that prior art references are printed publications as contemplated by 35 U.S.C. §§ 102 and 311(b).
PTAB Digest

Samsung SDI Co., Ltd. v. RYUJIN Patent & Licensing Ltd.

Board adopted Petitioner's construction of independent claim because it encompassed embodiment recited in dependent claim with offset at only one end of an electrode sheet.
PTAB Digest

Samsung SDI Co., Ltd. v. RYUJIN Patent & Licensing Ltd.

Patent owner argued for construction based on Examiner's amendment that was agreed but not entered and the Board rejected the construction after finding that agreeing to an amendment that is not entered does not constitute unmistakable disavowal.
PTAB Digest

Koito Manufacturing Co., Ltd. v. Adaptive Headlamp Technologies, Inc.

The Board instituted over Patent Owner's objections about cumulative references because (1) the Petition relied on a new primary reference and (2) the claims had been amended in inter partes reexamination.
PTAB Digest

Activision Blizzard, Inc. v. Acceleration Bay, LLC

Board denied authorization to Petitioner to file a motion to submit supplemental information where Petitioner had already served supplemental evidence responsive to Patent Owner's evidentiary objections.
PTAB Digest

LG Elecs., Inc. v. Core Wireless Licensing S.A.R.L.

Board granted Petitioner's unopposed motion to submit supplemental information, including expert deposition testimony from underlying district court litigation concerning publication status of prior art.
PTAB Digest

NVIDIA Corporation v. Samsung Electronics Company, Ltd.

The Board denied Petitioner's second IPR petition after denial of the first IPR petition because the second IPR petition was based on art that the Petitioner had known of when it filed the first IPR petition.
PTAB Digest

AT&T Mobility LLC v. Intellectual Ventures II LLC

Board denied institution of CBM notwithstanding dependent claim's recitation of "forming a billing record" where patent claimed methods of general utility with the mere potential for application in finance.   
PTAB Digest

American Megatrends, Inc. v. Kinglite Holdings, Inc.

The Board instituted IPR because the record did not show that the proposed adaptation of the prior art was beyond the reach of a person of ordinary skill in the art but encouraged development of the record regarding the combinability of the art.
PTAB Digest

Alarm.com Inc. v. Vivint, Inc.

The Board denied institution because Petitioner had not proved that the primary reference was entitled to its provisional priority date for prior art purposes.
PTAB Digest

Teladoc, Inc. v. American Well Corporation

Board rejected Patent Owner's claim construction based on the prosecution history because Patent Owner mistakenly failed to file the prosecution history as an exhibit and/or mis-filed an article in place of the prosecution history.
PTAB Digest

Neptune Generics, LLC v. Nektar Therapeutics

Board denied institution of petition where the Petitioner (and its expert)  failed to articulate its reasoning with rational underpinnings to support the legal conclusion of obviousness.
PTAB Digest

General Electric Co. v. University of Virginia Patent Foundation

Board authorized Petitioner to file a motion to submit supplemental information consisting of an office action from a related case that was mailed after institution.
PTAB Digest

WhatsApp Inc. v. Triplay, Inc.

While Board reiterated that a motion to exclude is not properly used to address arguments that exceed the permissible scope of a reply brief, it authorized Patent Owner to file two pages identifying improper arguments.
PTAB Digest

International Business Machines Corporation v. Intellectual Ventures I LLC

Board denied institution where, inter alia, Petitioner's expert analysis regarding anticipation was not adequately supported by evidence that the prior art necessarily, rather than possibly, disclosed a key claim element.
PTAB Digest

Jiawei Tech. (HK) Ltd. v. Richmond

Board granted Petitioner's renewed motion to expunge exhibits containing sensitive financial information, where the exhibits were not necessary for the patentability determination and were used only to resolve the real party-in-interest issue.
PTAB Digest

The Mangrove Partners Master Fund, Ltd., et al. v. Virnetx Inc.

Board denied Petitioner's motion for additional discovery after Patent Owner failed to make expert available for cross-examination, noting that cross-examination of declarants is routine discovery and that testimony may be given no weight.
PTAB Digest

The Boeing Company v. Seymour Levine

Board exercised its discretion to deny institution under 35 U.S.C. § 325(d) where it had granted petitioner's motion to supplement an already-existing petition and the supplementation effectively mooted the petition.
PTAB Digest Informative

FRONT ROW TECHNOLOGIES, LLC v. MLB ADVANCED MEDIA, L.P.

Board denied institution of obviousness grounds because Petitioner had not shown sufficient grounds for obviousness to combine.
PTAB Digest Informative

Sierra Wireless America, Inc., Sierra Wireless, Inc., and RPX Corp., v. M2M Solutions LLC

Board rejected Patent Owner's argument that Petition should be denied under 35 U.S.C. § 325(d) for presenting prior art that was already considered during prosecution because Patent Owner failed to show that prior art was presented in same manner.
PTAB Digest

Tietex International, LTD. v. Precision Fabrics Group, Inc.

Board denied institution of IPR where (a) the first asserted ground had effectively been the subject of a final written decision in a related proceeding and (b) petitioner failed to provide adequate motivation to combine the teachings of the art.
PTAB Digest

Square, Inc. v. Unwired Planet LLC

Board holds that the level of ordinary skill in the art may be implied by the teachings of the prior art, such that it is not error for a party (or the Board) to fail to expressly tie an invalidity proof to the level of ordinary skill in the art.
PTAB Digest

Square, Inc. v. Unwired Planet LLC

Board found dependent claim anticipated by prior art and found associated independent claim also anticipated by the prior art despite the fact that the petition did not separately identify a proposed ground of anticipation based on the reference.
PTAB Digest

Kingston Technology Company, Inc. v. CATR Co., Ltd.

The Board denied correction of a typographical error in patent claims because of inexcusable delay by Patent Owner in seeking the correction.
PTAB Digest Informative

THE UNITED STATES POSTAL SERVICE (USPS) AND THE UNITED STATES OF AMERICA, AS REPRESENTED BY THE POSTMASTER GENERAL v. RETURN MAIL, INC.

Board rejected Patent Owner's argument that Petitioner lacked standing to file a CBM petition because suit underlying CBM review was filed in the Court of Federal Claims under an eminent domain statute and not 35 U.C.C. §§ 271 and 281.
PTAB Digest

Vitro Packaging, LLC v. Saverglass, Inc.

Board denied institution after concluding that Petitioner's obviousness analysis was conclusory and failed to provide a reasoned analysis why the prior art created the same visual impression as the claimed design.
PTAB Digest

U.S. Endoscopy Group, Inc. v. CDx Diagnostics, Inc.

Board instituted inter partes review and concluded that claim was not indefinite even though claim term lacked antecedent basis because one skilled in the art would understand its meaning.
PTAB Digest

Apple, Inc. v. Rensselaer Polytechnic Institute and Dynamic Advances, LLC

The Board found that Petitioner was time barred from filing a petition even though the related district court case was voluntarily dismissed without prejudice because that case had been consolidated with another case in which litigation continued.

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