Analysis of patent litigation, PTAB practice, prosecution and pharma IP, written on the data behind LexDana.
Tagged post-grant review · clear
CASE OF THE WEEK ironSource Ltd. v. Digital Turbine, Inc. , Appeal No. 2024-1831 (Fed. Cir. April 7, 2026) In its only precedential patent opinion last week, the Federal Circuit dismissed an appeal from a post-grant review in which substitute claims were…
Article III Standing Only Necessary for Party Invoking Authority of Federal Courts Last week, I analyzed the government's arguments supporting Article III standing for intervenors in Knowles Electronics v. Matal. In that case, the panel questioned…
Failure to Argue Differing Claim Language of Similar Claims Haunts Appellant PTAB practitioners must always be mindful of the Board's longstanding practice to treat grouped claims as standing or falling together. That is, claims should be argued…
Patent Owner Sur-Replies on the Uptick Back in June of 2016, the Federal Circuit issued its opinion in Genzyme Therapeutic Products LP v. BioMarin Pharmaceutical Inc.( here ). At the time I explained that Genzyme was a game-changer . This was because it…
"Closely Tied" Language of Cuozzo & Institution-Centric Statutes The en banc opinion on the scope of the AIA's appeal bar (35 U.S.C. §§ 324(e)/314(d)) remains outstanding in WiFi One . Still, we have seen a few opinions from the…
High Court to Review Constitutionality of AIA Trials The Supreme Court has had at least three occasions over the past 7 months to review the constitutionality of AIA trial proceedings — it declined all three invitations. Thus, the writing appeared to…
Preliminary Responses Accompanied by Declaration Evidence: Updated Results Back on May 1st of 2016, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses. The PTAB implemented this change to…
Focus of CBM Standing Analysis: Claim Language Yesterday, the Federal Circuit denied en banc review in Secure Axcess LLC v. PNC Bank National Assoc., et al. The rehearing request sought a full court review of America Invents Act (AIA) Sec. 18's…
Recent Decision out of EDTX First to Get PTAB Estoppel Provision Correct IPR estoppel is established under 35 U.S.C. § 315(e)(2), which provides that “the petitioner in an inter partes review of a claim in a patent . . . that results in a final…
"All or Nothing" PTAB Institution Practice Coming Soon? Today, the Supreme Court granted certiorari in SAS Institute Inc., v. ComplemenSoft LLC. As previously explained , SAS argues that partial PTAB trial institutions are inconsistent with the…
Preliminary Responses Accompanied by Declaration Evidence: Updated Results Back on May 1st, the Patent Trial & Appeal Board (PTAB) began to accept new testimonial evidence with patentee preliminary responses . The PTAB implemented this change to address…
Burden of Production on Article III Standing to Bolster 315(b) Disputes at CAFC? Two weeks back, the Federal Circuit made clear that Article III standing is necessary for petitioners to appeal from adverse decisions in AIA trial proceedings. Phigenix, Inc.…
