Tagged with PTAB Proceedings

Recent PTAB Decisions Further Illuminate Denial of Review Under 35 U.S.C. § 325(D)

Authors: Kevin J. Spinella
Editor: Aaron J. Capron

Recently, the Patent Trial and Appeal Board (“PTAB”) denied grounds in petitions under 35 U.S.C. § 325(d) because the prior art and arguments relied on in the petitions were substantially similar to those presented during prosecution of the patents at issue.

For example, in Kayak Software Corp. v. IBM Corp. CBM2016-0075, Paper 16 (Dec. 15, 2016), the PTAB declined to institute a covered business method (CBM) petition under § 325(d).

In their Petition, the Petitioners used the exact combination of references that had been applied by the USPTO Examiner. The Petitioners also introduced a new reference not previously cited during prosecution as an additional means to demonstrate the unpatentability of U.S. Patent No. 7,072,849. Continue reading

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Second Edition of Finnegan’s PTAB Trials Guidebook Now Available

Authors: James D. Stein
Editor: Michael V. Young

Finnegan is pleased to announce that the American Bar Association Section of Intellectual Property Law released the second edition of The Practitioner’s Guide to Trials Before the Patent Trial and Appeal Board. Finnegan attorneys Erika H. Arner, Kathleen A. Daley and Michael J. Flibbert serve as the book’s editors alongside coauthors Timothy P. McAnulty, Cory C. Bell, Daniel C. Cooley, Joshua L. Goldberg, and James D. Stein.

More information about the release can be found here.

The guide can be purchased here. Continue reading

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District Court: Instituted IPR Defeats Motion for Preliminary Injunction

Author: Jon T. Self, Ph.D.
Editor: James D. Stein

On remand from the Federal Circuit, the district court in Murata Machinery USA, Inc. v. Daifuku Co., Ltd., 2016 WL 4287040 (D. Utah Aug. 15, 2016) reaffirmed its earlier decision to deny Murata’s motion for a preliminary injunction. The litigation had been stayed pending resolution of instituted IPR proceedings involving Murata’s asserted patents. The Federal Circuit remanded the case because the district court did not “provide an adequate reason for its decision [denying the preliminary injunction] beyond merely noting that the case has been stayed,” but the Federal Circuit did not say that the district court’s conclusion was wrong.

Now articulating its reasoning, the district court said that the USPTO’s “[a]cceptance of the patents for IPR raises a question about the validity of the patents, which is one of the key considerations in determining whether a plaintiff is able to demonstrate a likelihood of success on the merits.” And “[a]s long as the IPRs are pending before the Patent Trial and Appeals Board, the court concludes that Murata will not be able to demonstrate a likelihood of success on the merits”—one of the requirements to show entitlement to a preliminary injunction. Observing the tension between the requirements for a stay and a preliminary injunction, the district court also noted that “the main reason that a court should not ordinarily grant both a preliminary injunction and a stay [at the same] time is that the factors that weigh in favor of issuing a stay are often the same factors that weigh against issuing a preliminary injunction.”
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