District Court Extends IPR Estoppel To Non-Petitioned Invalidity Grounds
By Mike Lavine and Matt Johnson Presidio Components, Inc. (“Presidio”) petitioned for inter partes review (IPR) of U.S. Patent No. 6,144,547 (the “‘547 Patent”), which American Technical Ceramics Corp. and AVX Corporation (together “plaintiffs”) asserted against...
Supreme Court Will Decide Whether “All the Expenses” Includes “Attorneys’ Fees”
By Gregory A. Castanias, Daniel Kazhdan, and Jihong Lou As we wrote previously, the Federal Circuit sitting en banc held that a patent applicant can seek district court review of a PTO rejection of its application without having to pay for the time the PTO’s attorneys...
Infringement Suit Filed Without Standing Does Not Trigger Time-Bar
By Alex Li and Matt Johnson On January 31, 2019, the Patent Trial and Appeal Board issued a decision granting institution of inter partes review in Sling TV, L.L.C. v. Realtime Adaptive Streaming, L.L.C., No. IPR2018-01331, where the Board held that a patent...
Return Mail Argued Before the Supreme Court
By Gregory Castanias and Jihong Lou On February 19, the Supreme Court heard oral argument in Return Mail, Inc. v. United States Postal Service, No. 17-1594 (U.S.). This case raises an interesting question of statutory interpretation: whether the government is a...
PTAB Can Reach Final Written Decision On Challenges Unlikely To Succeed
By Jordan Powers and Dave Maiorana In SAS Institute v. Iancu, the Supreme Court held that when the PTAB institutes inter partes review under 35 U.S.C. § 314, it must decide the patentability of all claims the petitioner has challenged. SAS Institute left open the...