Network-1 Technologies, Inc. v. Hewlett-Packard Co., Appeal Nos. 2018-2338, -2339, -2395, -2396 (Fed. Cir., September 24, 2020).

Hewlett-Packard (HP) joined an IPR instituted by Avaya against Network-1’s ‘930 patent. HP only sought inter partes review on the grounds asserted by Avaya, which was obviousness based on two references. Network-1 prevailed in the IPR.

In

USPTO Director Andrei Iancu recently issued a memorandum to the PTAB titled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Review under § 311.” Relying on Section 311, the memorandum permits the use of Applicant Statements in IPRs, but not as a substitute for prior art patents and printed publications. Thus, Applicant Statements alone are not sufficient to form a basis for IPR institution. Rather, Applicant Statements can be used as evidence of the general knowledge in the art, as long as used in conjunction with prior art.
Continue Reading The Director’s Guidance on Applicant Statements

Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc., Appeal No. 2019-1686 (Fed. Cir., July 22, 2020).

Uniloc owned a patent entitled “System and Method for Adjustable Licensing of Digital Products.” In an IPR, petitioners Hulu and Netflix successfully challenged Uniloc’s claims. Uniloc, however, also filed a motion to amend to add substitute claims. Petitioner Hulu challenged the substitute claims under section 101 grounds.

Uniloc responded by arguing that Hulu could not raise section 101 in an IPR, but did not address Hulu’s arguments on the merits. Ultimately, the PTAB determined that the substitute claims were patent ineligible on Section 101 grounds and denied Uniloc’s motion to amend.
Continue Reading Section 101 Plays a Role in IPRs

Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, IPR2018-00600 (July 6, 2020)
Designated Precedential on July 6, 2020

Petitioner Hunting Titan challenged Patent Owner Dynaenergetics’ claims based upon anticipation and obviousness. During the trial, Patent Owner filed a motion to present substitute claims. Petitioner opposed the substitute claims, but only presented arguments based upon obviousness.
Continue Reading IPR Decisions Are to Rely on the Adversarial Process

DTN, LLC v. Farms Technology, LLC,  IPR2018-01412, -01525 (June 14, 2019)

On June 11, 2020, the PTAB designated as precedential its 2019 decision in  DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of the obligation to file agreements with the Patent Office under 35 U.S.C. §317(b) when seeking a termination.

The statute reads as follows:

Any agreement or understanding between the patent owner and a petitioner, including any collateral agreements referred to in such agreement or understanding, made in connection with, or in contemplation of, the termination of an inter partes review under this section shall be in writing and a true copy of such agreement or understanding shall be filed in the Office before the termination of the inter partes review as between the parties. At the request of a party to the proceeding, the agreement or understanding shall be treated as business confidential information, shall be kept separate from the file of the involved patents, and shall be made available only to Federal Government agencies on written request, or to any person on a showing of good cause.
Continue Reading The Obligation to Submit Agreements in IPRs Is Broad

General Electric Co. v. Raytheon Technologies Corporation, fka United Technologies Corporation, Case No. 19-1012.

On February 24, 2020, we reported on GE’s petition for certiorari to the Supreme Court. The petition sought review of the Federal Circuit’s doctrine on Article III standing for petitioners to appeal IPR decisions, which essentially required a possibility of

Ciena Corp. v. Oyster Optics, LLC, Appeal No. 2019-2117 (Fed. Cir., May 5, 2020).

On January 28, 2020, the Federal Circuit issued a non-precedential order that denied IPR petitioner Ciena’s motion to have a judgment vacated and remanded under Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019). The order was made precedential on May 5, 2020.
Continue Reading Arthrex Is Not for Everyone

Thryv, Inc. v. Click-To Call Technologies, LP, et al., 590 U.S. ___, Case No. 18-916 (slip op., April 20, 2020)

IPR petitioner Thryv challenged patent owner Click-To-Call’s patent and several claims were cancelled. Click-To-Call sought judicial review of the IPR institution decision.

Click-To-Call alleged that a 2001 lawsuit between predecessor companies triggered the Section