PTAB Denies a Petition for Inter Partes Review for Petitioners Failing to Identify All Real Parties-in-Interest

In Paramount Home Entertainment Inc. v. Nissim Corporation, IPR2014-00961, the Patent Trial and Appeal Board (“PTAB”) denied a Petition to institute inter partes review of claims 1-5 of U.S. Patent No. 6,304,715 (“the ‘715… Read More

Precedential PTAB Decision Provides Reminder That PG Patent Review Is Barred By Prior Civil Action Challenging Validity

On November 15, 2013, SecureBuy, LLC, petitioned the US Patent and Trademark Office for review of U.S. Patent No. 7,051,002 under the America Invents Act’s transitional program for covered business method patents. Two weeks earl… Read More

Inter Partes Review Barred by Real Party in Interest Requirement

The USPTO’s Patent Trial and Appeal Board (PTAB) has dismissed RPX Corporation’s multiple petitions for inter partes review (IPR) of four patents owned by Virnetx, Inc., holding that Apple, Inc., whose ability to bring… Read More

Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions To Initiate Inter Partes Review

In In re The Procter & Gamble Company. LLC, No. 121 (Fed. Cir. Apr. 24, 2014), Clio filed a declaratory judgment action against Procter & Gamble (“P&G”), asserting three P&G patents were invalid.  After unsucc… Read More

Federal Circuit Will Not Allow Mandamus Relief Of PTAB Decisions Not To Initiate Inter Partes Review

In In re Dominion Dealer Solutions. LLC, No. 109 (Fed. Cir. Apr. 24, 2014), Dominion petitioned the Patent Office Trial and Appeal Board (“PTAB”) to institute inter partes review of five patents.  The PTAB denied them all. … Read More

Federal Circuit Will Not Allow Appeals Of PTAB Decisions Not To Initiate Inter Partes Review

In St. Jude Medical, Cardiology Div., Inc. v. Volcano Corp., No. 2014-1183 (Fed. Cir. Apr. 24, 2014), St. Jude sued Volcano for patent infringement.  Volcano counterclaimed against St. Jude, asserting St. Jude was infringing a Vo… Read More

PTAB Invalidates First Design Patent in Inter Partes Review

On April 22, 2014, the Patent Trial and Appeals Board (“PTAB”) ruled that a design patent claim in U.S. Patent No. D617,465 (the ‘465 Patent) is unpatentable as obvious.  Munchkin, Inc. v. Luv N’ Care Ltd., No. IPR201… Read More

Investors in a Separate Corporation that Files an IPR Petition Are Not Real-Parties-in-Interest

Clouding IP is the assignee of U.S. Patent No. 6,738,799 (the ‘799 patent).  The ‘799 patent is related to a method of file synchronization using a signature list.  Clouding asserted the ‘799 patent in a host of lawsuits,… Read More

Does a "Covered Business Method" Patent Review Warrant a Stay of Litigation?

A court in the Eastern District of Texas has declined to stay litigation where the United States Patent and Trademark Office is conducting a “Covered Business Method” review of the patent-in-suit under Section 18 of the Americ… Read More

When Is a Document Publicly Available (and Therefore Prior Art)?

A document can qualify as “prior art” under 35 U.S.C. § 102 even when the document is what one might charitably describe as barely publicly available, and even when the document is incomplete. In re Enhanced Security Research… Read More

Upcoming Webinar

Christopher Francis and Charles Bieneman will conduct Part Two of a two-part webinar to discuss best practices for preparing, and then prosecuting, patent applications at the USPTO. The presentation will dive underneath the basic legal requirements…Register

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