Joinder Bid After Prior Petition Denial Fails
By Matt Johnson - After being sued by Uniloc in April 2018 for infringement of U.S. Patent No. 6,467,088 (“Reconfiguration Manager for Controlling Upgrades of Electronic Devices”), Apple challenged claims 1-21 of that patent at the PTAB in October of that year in...
District Court Issues Sanctions for Patent Owner’s Shapeshifting Arguments at the PTAB
By Matt Johnson – Although infrequently awarded, district courts are empowered to issue sanctions for behavior at the PTAB that they deem “exceptional” under Octane Fitness. In Game and Technology Co., Ltd. v. Wargaming Group Limited, district court defendant and...
Final FY 2020 PTAB Statistics Posted
By Matt Johnson - Total PTAB petitions remained flat in FY2020, with 1513 petitions total being filed: IPR (1429), PGR (64), and CBM (20), compared to 1464 in FY2019 and 1613 FY2018, down from 1901 in FY2017. September IPR petition filings were 4th highest for the...
PTAB Requests Comments Regarding Discretionary Institution Issues
By Matt Johnson - The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2140 (2016). Since the...
Invalidity Counter Against Unasserted Claim Does Not Implicate §315(a)
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...