by David Maiorana | Oct 15, 2020 | PTAB Trial Basics, Standing
By Dave Maiorana – It is well-established that a counterclaim for invalidity in a district court litigation does not trigger the 35 U.S.C. § 315(a) bar. See 35 U.S.C. § 315(a)(3). See also our previous posts here and here discussing strategies for declaratory...
by John Marlott | Apr 16, 2020 | PTAB Trial Basics, Standing
By John Marlott – While acknowledging an “apparent loophole” in the America Invents Act, a district court has permitted an accused-infringer-DJ-plaintiff to pursue counterclaims for patent invalidity—with no bar on later seeking an IPR at the PTAB. Epic Games,...
by Albert Liou | Mar 3, 2020 | Standing
By Albert Liou and Chris Buxton – After the Supreme Court’s 2019 decision in Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019), held that federal agencies are not “persons” eligible to challenge a patent at the PTAB, the government was...
by Geoffrey Gavin | Sep 12, 2019 | PTAB Trial Basics, Standing
By Geoffrey Gavin and Matt Johnson The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the patent. See...
by Matthew Johnson | Aug 1, 2019 | Federal Circuit, Prior Art Issues, Standing
By Elizabeth Dengler,* Mike Lavine, Jihong Lou, Matthew Johnson Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding...
by Greg Castanias | Jun 21, 2019 | Standing
Gregory A. Castanias and Jihong Lou On June 10, in a 6-3 decision in Return Mail, Inc. v. United States Postal Service, the Supreme Court ruled that a federal agency is not a “person” eligible to request post-issuance review of a patent under the Leahy-Smith America...
