Fintiv Revisited—District Court Transfer Results in Institution Reversal
By David Linden and Dave Maiorana - In November 2020, Google LLC filed two petitions requesting an inter partes review of the claims of Ikorongo Technology LLC (“Ikorongo”) owned U.S. Patent No. 8,874,554 (“the ’554 patent”). Separate petitions were filed to address...
CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground
By Robby Breetz, Christian Roberts, and Matt Johnson - Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.” 35 U.S.C. § 311(b)...
Rolling The Dice – Discretionary Denial And Forum Selection Clauses
By Alison Ibendahl and Joe Beauchamp - * The Federal Circuit has just issued an additional decision in this dispute today. We will cover that development further shortly. In a recent decision, the Patent Trial and Appeals Board granted institution of inter partes...
Ho, Ho, No: CAFC Delivers Reversal, Vacatur, and Remand in Christmas Tree Row
By Emily Tait - The Federal Circuit recently issued another decision in a longstanding dispute between Willis Electric Co. and Polygroup Ltd. involving two patents owned by Willis (U.S. Patent Nos. 8,454,186 and 8,454,187) directed to lighted artificial Christmas tree...
Down to the Wire: POP Finds Petition Payment Timely
By Albert Liou - On January 14, 2022, the PTAB issued a precedential opinion granting a request for rehearing of a denial of an IPR petition that had previously found a petition to be time-barred because the wire transfer had not been timely paid. Toshiba America...