PTAB Decisions

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On December 11, 2019, the Patent Trial and Appeal Board (“PTAB”) designated Ex parte Hannun, 2018-003323 (Apr. 1, 2019) as an informative PTAB decision for applying the United States Patent and Trademark Office’s (“USPTO”) 2019 Revised Patent Subject Matter Eligibility Guidance (“2019 PEG”) to determine patent eligibility under 35 U.S.C. § 101.

As laid…

The PTAB’s Precedential Opinion Panel (POP) issued its decision in Hulu, LLC v. Sound View Innovations, LLC, IPR2018-01039, Paper 29 (P.T.A.B. Dec. 20, 2019) [hereinafter Hulu], which addresses the requirement for a petitioner to establish that an asserted reference qualifies as a printed publication for institution of an inter partes review. The PTAB POP determined that Hulu, as the petitioner, had produced sufficient evidence to establish a reasonable likelihood that the disputed reference, Dougherty, was publicly accessible before the critical date of the challenged patent. The POP cited the facts that Dougherty (1) “bears a copyright date of 1990”, (2) has “a printing date of November 1992”, (3) has an ISBN date of 8/94, and (4) is a textbook from an established publisher, O’Reilly, and is part of a well-known book series. Hulu, at 19.
Continue Reading PTAB Precedential Opinion Panel Evaluates Standard for Showing Public Accessibility of a Reference

Faced with criticism from legislators and patent owners for perceived serial harassment by patent challengers, on May 7, 2019, the Patent Trial and Appeal Board (“the PTAB” or “the Board”) designated two decisions as “precedential” that arguably expand its discretion to deny petitions in PTAB proceedings.

Previously, in General Plastic Industrial Co., Ltd. v. Canon…

On April 16, 2019, the Patent Trial and Appeal Board (“the PTAB” or “the Board”) designated three orders as precedential related to the issue of the incomplete disclosure of “real parties-in-interest” (“RPIs”) at the time of the filing of petitions for post-grant proceedings.  These three relatively recent orders—all issued since January 2019—present a range of…

Between March 7 and April 5, 2019, the Patent Trial and Appeal Board (“the PTAB” or “the Board”) designated a series of decisions as either “precedential” or “informative.”  As part of its revised standard operating procedures (SOP2), the PTAB may designate an otherwise routine decision as precedential—a binding authority in subsequent matters involving similar facts…

On January 24, 2019, the PTAB denied institution of inter partes review (“IPR”) in Deeper, UAB v. Vexilar, Inc., Case IPR2018-01310 (PTAB Jan. 24, 2019) (Paper 7). The PTAB exercised its discretion to deny institution despite finding that Deeper demonstrated a reasonable likelihood of success in prevailing as to two of the twenty-three claims…

On December 12, 2018, the U.S. Patent and Trademark Appeal Board (PTAB) ruled in favor of Mylan in its inter partes review (IPR) proceedings. It found all claims of Sanofi’s Lantus formulation patents (U.S. Patent Nos. 7,476,652 and 7,713,930) unpatentable as obvious on numerous grounds, and held that despite over $2 billion in annual sales,…

The PTAB, on November 27, 2018, released the public version of Unified Patents, Inc. v. Realtime Adaptive Streaming, LLC, IPR2018-00883, Paper 29 (P.T.A.B. Oct. 11, 2018), finding membership in petitioner’s company plus only an interest in the outcome of the IPR fails to satisfy the AIT analysis for a real party-in-interest (“RPI”).

Realtime…

The Patent Trial and Appeal Board (“the Board”) recently held that Customedia Technologies, LLC (“Customedia”) could not moot the CBM proceeding with a post-institution disclaimer of the claims found to recite a financial activity element. Dish Network Corp. v. Customedia Techs., LLC, CBM2017-00023, Paper 48 at 23 (P.T.A.B. June 11, 2018).

A patent is…