The Supreme Court of the United States issued a ruling today in Return Mail, Inc. v. Postal Service, 587 U.S. ___ (2019), holding that the United States Government is not a “person” eligible to petition for covered-business-method (“CBM”) review, inter partes review (“IPR”), or post-grant review (“PGR”) America Invents Act (“AIA”) proceedings before the

Article III standing has become a contested and often dispositive issue in appeals from the Patent Trial and Appeal Board (PTAB).  For example, as we reported previously, the Federal Circuit has dismissed an inter partes review (IPR) petitioner’s appeal where the petitioner-appellant lost standing by abandoning development of its potentially infringing product.[1]  We also

Recently, in AVX Corp. v. Presidio Components, Inc., the Federal Circuit dismissed AVX Corp.’s (“AVX”) appeal of the PTAB’s inter partes review decision for lack of standing. AVX petitioned the PTAB for an inter partes review of the 21 claims of U.S. Patent No. 6,661,639 (“the ’639 patent”). Presidio Components Inc. (“Presidio”) owns the

An upcoming Precedential Opinion Panel (“POP”) at the Patent Trial and Appeal Board (“PTAB” or “the Board”) may offer improved clarity for petitioners and patent owners when a petitioner relies on non-patent literature in challenging a patent.

Background

Hulu, LLC sought inter partes review (“IPR”) of U.S. Patent No. 5,806,062 (“the ’062 patent”) asserting claims

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 18, 2019, in Dodocase VR, Inc. v. MerchSource, LLC, No. 2018-1724 (Fed. Cir. Apr. 18, 2019) (nonprecedential), the Federal Circuit affirmed the District Court for the Northern District of California, agreeing that Dodocase VR, Inc. (“Dodocase”) is entitled to a preliminary injunction against MerchSource, LLC (“MerchSource”). The preliminary injunction requires that MerchSource

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

The Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB” or “the Board”) ruling that invalidated three patents in three separate IPR proceedings (IPR2015-00325, IPR2015-00326, and IPR2015-00330).  The patent owner, ATI Technologies, asserted that the inventions in the challenged claims antedated the asserted prior art.  That is, ATI attempted to swear behind the asserted

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 March 8, 2019, in Personal Web Technologies, LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. Mar. 8, 2019) the Federal Circuit reversed the Patent Trial and Appeals Board’s (the “Board” or “the PTAB”) cancellation of U.S. Patent No. 7,802,310 (“the ’310 patent”) based on inherent obviousness in an inter partes review (“IPR”).   Another