Cases

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

PTAB Digest

Dish Network Corp. and Dish Network LLC v. Customedia Techs., LLC

Board held that Patent Owner's request to file a post-institution statutory disclaimer of claims was too late to warrant termination of the proceeding, ordered the Patent Owner to file the disclaimer, and continued CBM proceeding. 
PTAB Digest

Oil-Dri Corp. of America v. Nestle Purina Petcare Co.

Court held that IPR estoppel extends to nonpetitioned grounds with respect to patent claims for which the PTAB issued a final written decision.
PTAB Digest

Mexichem Amanco Holdings S.A. DE C.V., Daikin Indus., Ltd. v. Honeywell Int'l Inc.

Federal Circuit reversed Board, holding that inherent properties of a composition are not obvious if they are unpredictable or unexpected.
PTAB Digest

Mexichem Amanco Holdings S.A. DE C.V., Daikin Indus., Ltd. v. Honeywell Int'l Inc.

Federal Circuit reversed Board, holding that a patent owner may rebut a prima facie case of obviousness by showing that results would have been unexpected, and not that a person or ordinary skill would have expected failure.
PTAB Digest

Facebook, Inc. v. Windy City Innovations, LLC

Board granted motion for self-joinder and joined a second petition challenging different claims than were challenged in the first petition after finding that when first petition was filed, Petitioner did not know which claims would be asserted.
PTAB Digest

Sprint Spectrum, L.P. v. TC Technology, LLC

Board found that Petitioner failed to prove that a European patent was prior art because prior art status depended on the publication date of the EP application and Petitioner failed to file the application or show that it had the same content.
PTAB Digest

Hospira, Inc. v. Genentech, Inc.

Board instituted a petitioned ground despite the fact that the same information had been before the patent examiner during prosecution, after finding that an expert declaration "presents the prior art in a new light."
PTAB Digest

Home Semiconductor Corp. v. Samsung Elecs. Co. Ltd., et al.

Federal Circuit rejected Board's BRI construction as overly broad and inconsistent with the claim language, adopted a construction that neither the parties nor the Board proposed, and reversed the Board's finding of unpatentability.
PTAB Digest

Diablo Techs., Inc. v. Netlist, Inc.

Federal Circuit reversed Board's claim construction for failing to fit the context in which terms were used in the asserted claims and remanded for further proceedings.
PTAB Digest

Department of Justice v. IRIS Corporation Berhad

In finding the government in privity with Japan Airlines, and petition time barred under 35 U.S.C. § 315(b), the Board explained the differences between "real-party-in-interest" and privity and explained the key precedents it applies.
PTAB Digest

Cultec, Inc. v. StormTech, LLC

Board denied motion to afford petition an earlier filing date because petitioner unreasonably failed to follow the Board's rules and guidance on payment, and summarized each of the Board's key decisions refusing to adjust filing dates.
PTAB Digest

Veeam Software Corp. v. Veritas Technologies LLC

After a lengthy, post-remand analysis, Board granted motion to substitute an amended claim for another found invalid, and denied motion with respect to a second claim that lacked written description support.
PTAB Digest

Albaad Massuot Yitzhak, Ltd. and Albaad USA, Inc. v. Uni-Charm Corp. and Edgewell Personal Care Brands, LLC

Board denied institution because petition improperly attempted to prove that prior art disclosed claim limitations reciting particular quantitative dimensions by relying on the dimensions of not-to-scale figures in the prior art.
PTAB Digest

H&S Mfg. Co., Inc. v. Oxbo Int'l Corp.

Board granted motion to file as an exhibit in the IPR proceeding a district court opinion and order that was related to the validity of the challenged patent.
PTAB Digest

Reactive Surfaces Ltd., LLP v. Toyota Motor Corp.

Board held that patent co-owner, Regents of the University of Minnesota, was entitled to dismissal on sovereign immunity grounds, but continued IPR after finding that co-owner Toyota would adequately represent the Regents' interests.
PTAB Digest

FujiFilm Corp. v. Sony Corp.

Board denied motion to disqualify expert who Petitioner engaged as its IPR witness despite the fact that the expert was a consultant to Patent Owner in a related proceeding because Patent Owner failed to prove he received confidential information.
PTAB Digest

HTC Corp. v. IPCom GmbH & Co.

Federal Circuit vacated Board's construction of a means-plus-function claim term because the Board treated it as a purely functional limitation and failed to articulate the structural means for performing the recited function.
PTAB Digest

Celltrion, Inc. v. Biogen, Inc. and Genentech, Inc.

Board granted motion for additional discovery and allowed petitioner to serve RFAs on patent owner to prove publication of an exhibit after explaining and applying the five Garmin factors.
PTAB Digest

Askeladden LLC v. Purple Leaf, LLC

Board denied motion by patent owner's counsel to withdraw because withdrawal would prejudice patent owner, whose Response was imminently due, and prejudice the Board by impacting the Board's deadline for issuing a final written decision. 
PTAB Digest

Samsung Elecs. Co., Ltd., Micron Tech., Inc., and SK Hynix, Inc. v. Elm 3DS Innovations, LLC

Board concluded that Petitioner's attorney argument was insufficient to carry its burden of proof and observed that in cases involving complex technology, expert testimony may be critical to establish a motivation to combine prior art references.
PTAB Digest

Arctic Cat, Inc. v. Polaris Industries, Inc.

Board struck portions of petitions that exceeded word count, and explained that the Board's word count limits for papers require that, when pasting blocks of text as an image, the words in that block must be counted as well. 
PTAB Digest

Arris Group, Inc., Aruba Networks, Inc., Hewlett Packard Enterprise Co., and HP, Inc. v. Mobile Telecommunications Technologies, LLC

Board expunged certain slides from Patent Owner's demonstrative exhibits because they contained material from declarations in the record that was not cited or discussed in the Patent Owner's Response.
PTAB Digest

Reactive Surfaces Ltd., LLP v. Toyota Motor Corp.

Board held that the deposition of any declarant who offers testimony for the proceeding is routine discovery, even if only offered testimony in support of a Preliminary Response, and that scope included instituted grounds and witness credibility.

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