Tridia Corporation vs. Sauce Labs, Inc., 1-15-cv-02284 (GAND September 28, 2016, Order) (May, USDJ)
Friday, September 30, 2016
Thursday, September 29, 2016
Janssen Biotech, Inc. et al v. Celltrion Healthcare Co., Ltd. et al, 1-15-cv-10698 (MAD September 26, 2016, Order) (Wolf, USDJ)
Wednesday, September 28, 2016
Counsel's Prior Substantial Representation of Manufacturer Does Not Justify Disqualification in Lawsuit Against Manufacturer’s Customers
TQ Delta, LLC v. Pace Americas, LLC et al, 1-13-cv-01835 (DED September 26, 2016, Order) (Andrews, USDJ)
Tuesday, September 27, 2016
Oracle America, Inc. v. Google Inc., 3-10-cv-03561 (CAND September 23, 2016, Order) (Alsup, USDJ)
Monday, September 26, 2016
PTAB’s Finding of No Corresponding Structure Does Not Alter Court’s Earlier Finding of No Indefiniteness
Microwave Vision, SA et al v. ESCO Technologies, Inc. et al, 1-14-cv-01153 (GAND September 20, 2016, Order) (Jones, USDJ)
Friday, September 23, 2016
PerdiemCo, LLC. v. IndusTrack LLC, 2-15-cv-00727 (TXED September 21, 2016, Order) (Payne, MJ)
Thursday, September 22, 2016
Loggerhead Tools, LLC v. Sears Holdings Corporation et al, 1-12-cv-09033 (ILND September 20, 2016, Order) (Darrah, USDJ)
Wednesday, September 21, 2016
TriDim Innovations LLC v. Amazon.com, Inc., 3-15-cv-05477 (CAND September 19, 2016, Order) (Donato, USDJ)
Tuesday, September 20, 2016
Integra LifeSciences Corporation et al v. HyperBranch Medical Technology, Inc., 1-15-cv-00819 (DED September 12, 2016, Order) (Burke, MJ)
Monday, September 19, 2016
Zak v. Facebook, Inc., 4-15-cv-13437 (MIED September 12, 2016, Order) (Berg, USDJ)
Friday, September 16, 2016
ART+COM Innovationpool GmbH v. Google Inc., 1-14-cv-00217 (DED September 9, 2016, Order) (Dyk, CJ)
Thursday, September 15, 2016
Personalized Media Communications LLC v. Apple Inc., 2-15-cv-01366 (TXED September 13, 2016, Order) (Payne, MJ)
Wednesday, September 14, 2016
Fact Issues as to Performance of Claims by a “Person With Pen and Paper” Bar Resolution of 35 U.S.C. § 101 Eligibility Prior to Claim Construction
Diamond Grading Technologies LLC v. American Gem Society et al, 2-14-cv-01161 (TXED September 12, 2016, Order) (Payne, MJ)
Tuesday, September 13, 2016
Petition for Covered Business Method Patent Review by CQG, Inc., CBM2016-00047 (PTAB September 9, 2016, Order) (Cherry, APJ)
Monday, September 12, 2016
Illumina, Inc. et al v. QIAGEN, NV et al, 3-16-cv-02788 (CAND September 9, 2016, Order) (Alsup, USDJ)
Friday, September 9, 2016
Comcast Cable Communications, LLC et al v. Sprint Communications Company LP et al, 2-12-cv-00859 (PAED August 25, 2016, Order) (Dubois, SJ)
Thursday, September 8, 2016
Motion to Dismiss for Lack of Patentable Subject Matter Denied for Failure to Establish Representative Claims
JSDQ Mesh Technologies LLC v. Fluidmesh Networks, LLC f/k/a Fluidmesh Networks, Inc., 1-16-cv-00212 (DED September 6, 2016, Order) (Sleet, USDJ)
Wednesday, September 7, 2016
One of the rule changes affecting PTAB proceedings allows patent owners an opportunity to supply new evidence with their preliminary response to the petition before the PTAB decides to institute patent review proceedings. Public comments received by the USPTO argued that the new rule would help level the playing field in PTAB proceedings, allowing evidence from both sides prior to the decision to institute an IPR or other proceedings. The preliminary response is a voluntary action for a patent owner and the USPTO maintains that “no negative inference will be drawn” if a patent owner decides not to file a preliminary response.
Since these rules went into effect on May 2nd, patent owners have had this new option for responding to patent challenges at the PTAB. Now, Docket Navigator has made search tools available for those who want to find out whether a preliminary response containing new testimony provides any benefit to a patent owner.
Of the 16 institution decisions filed since May 2nd in IPRs in which a patent owner filed a preliminary response with a declaration, seven IPRs were granted institution while six others were denied; the remaining three were granted partial institution. This is admittedly a small sample size, so caution should be used when extrapolating statistics from it. As Rick Neifeld, of Neifeld IP Law in Alexandria, VA, commented, “We should have a statistically significant number of cases by the end of September.” When compared to the overall success rate of IPR institution decisions filed during that same time period, the results so far seem to indicate that IPRs are denied more often when a patent owner files a preliminary response. Of the 380 institution decisions in IPRs filed between May 2nd and August 26th of this year, 122 have been denied institution while 172 have been instituted.
Taking out the IPR petitions in which a preliminary response has been filed without a declaration, it’s easy to see that the filing of a declaration with the preliminary response at least correlates with higher rates of denial of institution for IPRs. Of 364 IPRs in which the patent owner did not file a declaration with the preliminary response, just under 32% were denied institution while more than 45% were granted institution. When preliminary responses with declarations are filed by a patent owner (see the first chart), IPRs are denied institutions at a rate of 37.5%. Partial institutions also rise slightly when declarations are filed with preliminary responses to about 19% percent compared to around 23% when declarations aren’t filed with the preliminary responses.
The American intellectual property landscape continues to shift and it is helpful for patent owners to stay on top of how recent legal developments can affect their ability to retain their patent rights. With Docket Navigator, a patent owner has sophisticated tools which can provide insights into the best methods for defending against a PTAB challenge.
Charts made using Docket Navigator's data.
This guest post was written by Steve Brachmann.
Raniere v. Microsoft Corp., 3-15-cv-00540 (TXND September 2, 2016, Order) (Lynn, USDJ)
Tuesday, September 6, 2016
EMC Corporation, et al. v. Pure Storage Inc., 1-13-cv-01985 (DED September 1, 2016, Order) (Andrews, USDJ)
Friday, September 2, 2016
Test Kit Claims, but not Method Claims, of Tuberculosis Testing Patent Invalid Under 35 U.S.C. § 101
Oxford Immunotec Ltd. v. Qiagen NV et al, 1-15-cv-13124 (MAD August 31, 2016, Order) (Cabell, MJ)
Thursday, September 1, 2016
Sound View Innovations, LLC v. Facebook, Inc., 1-16-cv-00116 (DED August 30, 2016, Order) (Andrews, USDJ)