RPI: Not Quite a Jurisdictional Requirement
By Mike Lavine, Matt Chung, and Matt Johnson - Recently, the Patent Trial and Appeals Board (PTAB) declined to terminate an inter partes review (IPR) proceeding despite the Petitioner’s alleged failure to identify all the real parties-in-interest (RPIs). Unified...
PTAB Statistics Through Four Months of FY2022
By Matt Johnson – The institution rate for post-grant petitions in FY 2022 through the end of January 2022 (Oct. 1, 2021 through January 31, 2022) stands at 63% (279 instituted, 164 denied) compared to 59% in the previous fiscal year. The Patent Office notes that on...
DON’T SAVE THE BEST: FEDERAL CIRCUIT CONFIRMS BROAD IPR ESTOPPEL
By Ana Teixeira and Matt Johnson - The patent fight between Caltech and Broadcom/Apple made waves this month when the Federal Circuit vacated the $1.1 billion infringement award that Caltech had won in district court. To PTAB practitioners, however, the sea change...
Fintiv Revisited—District Court Transfer Results in Institution Reversal
By David Linden and Dave Maiorana - In November 2020, Google LLC filed two petitions requesting an inter partes review of the claims of Ikorongo Technology LLC (“Ikorongo”) owned U.S. Patent No. 8,874,554 (“the ’554 patent”). Separate petitions were filed to address...
CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground
By Robby Breetz, Christian Roberts, and Matt Johnson - Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b)...