Strategic Considerations for Duplicative Filings before the PTAB – Presentation Slides
Summary of Presentation Slides: Litigants have long utilized duplicative filing of IPR or CBM petitions to obtain the benefit of arguments made by earlier petitioners and to improve leverage for settlements with patent owners. Such litigants often rely an important...
ITC Refuses to Stay Investigation Pending Inter Partes Review
The International Trade Commission ("ITC") has never granted a stay of a Section 337 investigation in favor of an American Invents Act inter partes review ("IPR") at the U.S. Patent and Trademark Office ("USPTO"). That trend continued last week when Administrative Law...
Motion to Dismiss in District Court Case Held Premature While Appeal of PTAB Decision to Federal Circuit for Similar Technology is Pending
In Synchronoss Technologies, Inc. v. Hyperlync Technologies, Inc., 3-15-cv-02845 (NJD March 7, 2016, Order) (Cooper, J.), the U.S. District Court for the District of New Jersey denied, without prejudice, Hyperlync’s motion to dismiss on 35 USC § 101 grounds. The...
Federal Circuit Panel Finds PTAB Does Not Need to Revisit Redundant Grounds
In Harmonic, Inc. v. AVID Technology, Inc., a Federal Circuit panel affirmed the PTAB's decision in IPR2013-00252 and ratified certain aspects of the Board's handling of redundant grounds of unpatentability. In PTAB trials, such as IPRs, petitioners can present one...
PTAB Provides Guidelines on Swearing Behind References.
NHK Seating of Am., Inc. v. Lear Corp., IPR2014-01200, Final Written Decision, Paper 29 (P.T.A.B. Feb. 2, 2016) In IPR and CBM proceedings involving patents examined under pre-America Invents Act (AIA) rules, a patent owner may seek to disqualify a reference as prior...