In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd., No 19-civ-4297 (S.D.N.Y Jan. 19, 2021), the parties’ forum selection clause in their non-disclosure agreement did not prevent Samsung Electronics Co., Ltd. (“Samsung”) from challenging Kannuu Pty, Ltd.’s (“Kannuu”) patent in an IPR proceeding.  The court held IPR petitions did not fall within the scope

In 2017, Twitter, Inc. (“Twitter”) filed two petitions requesting inter parties review (“IPR”) of U.S. Patent No. 9,083,997 (“the ’997 patent”), with the first petition directed to claims 1-19 and the second petition directed to claims 20-35. The Patent Trial and Appeal Board (“the Board”) issued two substantially similar Final Written Decisions (IPR2017-00829, IPR2017-00830) that

Moderna, one of the global leaders in developing a safe and effective vaccine to combat COVID-19, appears poised to get through clinical trials with a vaccine that is based on mRNA technology. As was recently announced, Pfizer demonstrated a 90% effectiveness with its vaccine, which is also based on mRNA technology. If all stays on

The Federal Circuit reconfirmed its interpretation of the IPR joinder rules of 35 U.S.C. § 315(c) after the panel’s rehearing in Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400, 2020 WL 5267975 (Fed. Cir. Sept. 4, 2020).  Appellant Facebook, Inc. had filed a combined request for panel rehearing and rehearing en banc.  The

Last week, Microsoft got tripped up at oral argument on the blocking and tackling of IPR practice:  making sure your prior art is prior art.

The specific error was eminently avoidable, though perhaps also eminently understandable. Under Federal Circuit law, a reference generally does not count as prior art unless it was “indexed.” (Think Dewey

Last week, four major technology companies – Apple, Cisco, Google, and Intel – brought suit against the United States Patent and Trademark Office (“USPTO”), challenging its authority to reject petitions for inter partes review (“IPR”) based on two precedential decisions by its Patent Trial and Appeal Board (“PTAB”).  The decisions, Apple Inc. v. Fintiv, Inc.

Thanks to a decision handed down by the Patent Office’s Patent Trial and Appeal Board (“PTAB”) last month, patent owners may find some difficulty in having petitions to institute inter partes review (“IPR”) dismissed based on the PTAB’s discretion under Section 314(a) of the patent act.  In Sand Revolution II, LLC v. Continental Intermodal Group

On June 18, 2020, the Federal Circuit granted JHO Intellectual Property Holdings, LLC’s (“JHO”) motion to vacate the PTAB’s final written decision and remand the case in light of the court’s decision in Arthrex. In an ex parte reexamination proceeding, the PTAB denied JHO’s request for rehearing of its decision affirming the Examiner’s rejections