Director Review: PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar
By Daniel Sloan and Matt Johnson - USPTO Acting Director Coke Morgan Stewart recently vacated and remanded three Final Written Decisions from the PTAB. Semiconductor Components Indus. v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 94...
Estoppel Trumps Substance: ITC Bars Respondent’s Invalidity Grounds Raised in IPR
By Evan Tassis and Matt Johnson - Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...
Trial Date Drives PTAB’s Denial of IPR Institution
By Mike Lavine - On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell Technologies Inc., Dell Inc.,...
Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds
By Omar Jishi and Matt Johnson - In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid on any...
PTAB Denies Institution of IPRs in Apple v. Haptic
By Carl Kukkonen - In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These decisions—IPR2024-01475 and...