Samsung Electronics Co., Ltd. v. NuCurrent, Inc., IPR2019-00860 (February 7, 2020) (Paper No. 15).

Samsung filed two IPR petitions against NuCurrent’s U.S. Patent No. 8,680,960, which related to a multi-layer-multi-turn structure for high efficiency inductors. The first petition was IPR2019-00858 based upon the Lee reference, and the second petition was IPR2019-00860 based upon the Partovi reference. Both petitions challenged the same claims of the ‘960 patent. The ‘858 IPR was instituted, but the ‘860 IPR was not instituted due to redundancy.
Continue Reading A Rare Rehearing by the PTAB

Samsung Electronics America, Inc. v. Priusa Engineering Corp., Appeal Nos. 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020).

Samsung filed an IPR petition against claims 1-4, 8 and 11 of U.S. Patent No. 8,650,591 owned by Priusa. The ‘591 patent was directed to editing video streams by substituting one object for a different one, such as a face. Slip op. at 4-5.
Continue Reading The PTAB Definitely Cannot do That

This article was published in February 2020 issue of IP Strategist. Copyright © 2020 ALM Media Properties, LLC.  It is republished here with permission.

The U.S. Supreme Court is set to determine just how “final and nonappealable” a decision to institute an inter partes review is. The highest court is primed to render yet another opinion related to patent and administrative law in Thryv, Inc. v. Click-to-Call Techs., L.P., No. 19-916 (2019) after oral arguments were heard on Dec. 9, 2019.
Continue Reading Do Not Pass Go? U.S. Supreme Court to Review Federal Circuit’s Finding of Justiciability

Koninklijke Philips N.V. v. Google LLC et al., Appeal No. 2019-1177 (Fed. Cir., January 30, 2020).

Google filed an IPR against Philips’ patent relating to a method of forming a media presentation on a client device from multiple related files. Google’s IPR petition presented two grounds of unpatentability (anticipation and obviousness) based upon the SMIL 1.0 reference supported by general knowledge in the art regarding distributed media presentations, referred to as pipelining. The general knowledge in the art was supported an expert declaration and the Hua reference, although Hua was not made part of a combination with SMIL 1.0 by Google.
Continue Reading The Person of Ordinary Skill in the Art Still Counts

Wasica Finance GmbH et al. v. Schrader Int’l, Inc. et al., C.A. 13-1353-LPS (D. Del. January 14, 2020) (publicly available on January 21, 2020).

Plaintiffs Wasica and Bluearc (collectively “Wasica”) filed an infringement action based on U.S. Patent No. 5,602,524 against defendants (collectively “Schrader”). The patent pertained to devices for measuring the air pressure in tires.
Continue Reading IPR Estoppel Strikes Again

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Inc., Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir., January 13, 2020)

On August 29, 2019, we reported on the Biodelivery decision, where the PTAB received on remand a partially-instituted IPR decision with directions to fully institute the IPR on all petitioned grounds. Instead of fully instituting the IPR, the PTAB declined to institute the IPR at all. Petitioner appealed, and the Federal Circuit dismissed.
Continue Reading IPR Institution Is Not Permanent, and Is Nonappealable – Part 2

Customedia Tech., LLC v. Dish Network Corp.., Appeal Nos. 2018-2239, -2240, -2310, 2019-1000, -1001, -1002, -1027 and -1029 (Fed. Cir., Nov. 1, 2019).

The day after the Federal Circuit issued its decision in Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., Oct. 31, 2019), the Federal Circuit issued a pair of precedential orders in appeals of inter partes reviews and covered business method reviews.  Appellant Customedia Tech sought to avail itself of the Arthrex decision to have adverse decisions vacated on the grounds that the Patent Trial and Appeals Board was constituted in a manner that violated the Appointments Clause of the U.S. Constitution.


Continue Reading Vacatur and Remand Is Not for Everyone

Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., October 31, 2019)

Since the inception of inter partes review at the Patent Trial and Appeals Board (PTAB), there have been a number of constitutional challenges to these type of proceedings.  This latest challenge concerned the very formation of the PTAB itself.


Continue Reading The PTAB and the Constitution

Biodelivery Sciences Int’l, Inc. v. Aquestive Therapeutics, Appeal Nos. 2019-1643, -1644, -1645 (Fed. Cir. August 29, 2019)

On motion, the Federal Circuit dismissed the second appeals in three IPRs pertaining to oral films used for the delivery of active components.  The PTAB initially instituted the three IPRs, but not on all the grounds contained in the petitions.  In total, there were seventeen grounds in the petitions, and the PTAB instituted on only three.


Continue Reading IPR Institution Is Not Permanent, and Is Nonappealable