Patent Lawyer Blog

On March 24, 2025, the USPTO officially reinstated the Fintiv factors framework for discretionary denials in post-grant proceedings with parallel litigation, following the February 2025 rescission of its 2022 Interim Procedure. This significant policy shift returns authority to Patent Trial and Appeal Board (PTAB)  judges to deny institution of inter partes reviews (IPRs) or post-grant reviews (PGRs) when parallel proceedings exist in district courts or the International Trade Commission (ITC), using a multi-factor analysis that weighs timing, resource efficiency, and overall merits. The decision reinforces the USPTO’s priority on preventing duplicative litigation and potentially upholds a higher bar for challenging patents when concurrent proceedings are underway.

The memo, signed by Chief Administrative Patent Judge Scott R. Boalick, informs PTAB members that the USPTO is returning to its previous guidance, including the precedential decisions in Apple Inc. v. Fintiv, Inc. and Sotera Wireless, Inc. v. Masimo Corp.

Key Points from the Memorandum:

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In a recent order in Omega Liner Company, Inc. v. BUERGOFOL GmbH, the Patent Trial and Appeal Board denied Patent Owner’s request to submit new inventor declarations with its sur-reply, highlighting the high bar for introducing new evidence late in inter partes review proceedings.

The case involves Patent 9,657,882 B2, where two inventors, Dr. Boutrid and Mr. Schleicher, previously provided declarations supporting the Patent Owner’s Response. The controversy arose when Petitioner Omega Liner alleged in its Reply that these declarations contained false statements and misrepresentations.

Majority Finds No “Extraordinary Circumstances”

Judge Grace Karaffa Obermann, writing for the majority, emphasized that Patent Owner failed to demonstrate the “extraordinary circumstances” required to deviate from rule 37 C.F.R. § 42.23(b) prohibiting new declaration evidence with a sur-reply.  “Importantly, Patent Owner does not ‘acknowledge, let alone address, its burden to establish ‘extraordinary circumstances’ that could warrant waiving the rule barring new’ declaration evidence with a sur-reply,” the Board noted.

The majority was unconvinced by Patent Owner’s argument that “the only way to raise facts to the Board’s attention is by submission of declaration testimony,” finding it conclusory and insufficient to justify the extraordinary relief requested.  “Patent Owner is free to explain in its Sur-reply why and how the Reply misquotes or misconstrues documents in the record, without reliance on the proposed new declarations,” Judge Obermann wrote.

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In a notable Final Written Decision on Remand, the Patent Trial and Appeal Board (PTAB) conducted a detailed examination of the prior art status of the Krassner reference (US 10,380,602 B2) in the inter partes review between Duration Media LLC and Rich Media Club LLC. This analysis proved central to determining the patentability of claims related to internet advertising viewability testing.

The Intertwined Patent Lineage

Interestingly, the challenged patent (the ‘329 patent) and the Krassner reference share significant DNA. The ‘329 patent is a continuation of application No. 12/384,403, which itself is a continuation-in-part (CIP) of application No. 11/803,779 — the very application from which Krassner issued. This familial relationship was explicitly acknowledged in the decision: “The ‘329 patent states that its underlying application is a continuation of application No. 12/384,403 (“the parent ‘403 application”), filed on Apr. 4, 2009, now Pat. No. 11,004,090, which is a continuation-in-part ((“CIP”)) of application No. 11/803,779 (“the grandparent ‘779 application”), filed on May 16, 2007, now Pat. No. 10,380,602…” Both parties agreed that “the ‘329 patent includes new matter relative to Krassner.” Patent Owner explained this new matter related to “Rich Media Club’s invention of a method to determine if an advertisement on a web page had come within (or was approaching), the viewable portion of a user’s webpage in a browser (sometimes referred to as the ‘viewport’).” As the Board recognized, “Krassner and the ‘329 patent share a significant amount of disclosure, with Krassner issuing from an application in the chain of priority applications identified by the ‘329 patent.”

The § 102(b) Question

Duration Media initially asserted that Krassner qualified as prior art under 35 U.S.C. § 102(b). The Board rejected this theory, noting “[a]s we explained in the Institution Decision, none of these references is prior art under § 102(b) because none was patented or published more than one year prior to April 4, 2009.” Krassner issued on August 13, 2019, far too late to qualify under § 102(b), which requires publication or patenting more than one year before the effective filing date of the challenged patent. Duration Media attempted to argue that a related patent application publication (US 2007/0265923 A1), published November 15, 2007, contained “substantively identical disclosure” to Krassner. The Board firmly rejected this approach: “Petitioner’s resurrected argument is based on a fundamental misunderstanding of § 311(b)… Petitioner requested to cancel the claims of the ‘329 patent on the basis of Badros, Harkins, and Krassner. Petitioner did not base its request, in whole or in part, on the Krassner publication.” Continue reading

In a significant ruling on the scope of the inter partes review time bar, the Patent Trial and Appeal Board rejected Greenthread’s attempts to dismiss Semiconductor Components’ petition as untimely, providing key guidance on privity relationships under 35 U.S.C. § 315(b).

The decision centered on Greenthread’s argument that the petition was time-barred due to the petitioner’s alleged privity with Intel and other licensees. The Board found these arguments unpersuasive, emphasizing the need for concrete evidence over theoretical relationships.

“The question of whether Petitioner is time-barred under § 315(b) is part of the determination of whether to institute an inter partes review,” the Board noted, citing the Supreme Court’s decision in Thryv, Inc. v. Click-to-Call Tech., LP.

Greenthread’s attempts to establish privity through various business relationships met particular skepticism. The Board emphasized that “a manufacturer-customer relationship does not necessarily suggest a privity relationship, and because Petitioner’s sales to Intel are licensed (as Patent Owner acknowledges), they do not support privity.” Continue reading

In a recent decision highlighting the intersection of settlements and joinder in patent challenges, the Patent Trial and Appeal Board (PTAB) has denied Mountain Voyage’s attempt to join a terminated inter partes review (IPR) proceeding involving The Ridge Wallet’s compact wallet patent.

The February 18, 2025 decision in IPR2024-01264 demonstrates how settlement of an existing IPR can foreclose opportunities for other parties seeking to join, even when their joinder motion is timely filed relative to the institution decision.

Background
Mountain Voyage filed its petition and motion for joinder on August 6, 2024, seeking to join an earlier IPR filed by Shenzhen Pincan Technology (the Shenzhen IPR). While Mountain Voyage filed within one month of the Shenzhen IPR’s institution as required by PTAB rules, the settlement and subsequent termination of the Shenzhen IPR in December 2024 proved fatal to Mountain Voyage’s strategy.

The Timing Trap
“There no longer is a pending proceeding in the Shenzhen IPR for Petitioner to join,” the Board explained, declaring the joinder motion moot. This left Mountain Voyage’s petition subject to the standard one-year time bar under 35 U.S.C. § 315(b), which had already expired. Continue reading

In a recent decision highlighting the Patent Trial and Appeal Board’s growing concern with multiple petition practice, the PTAB has denied Apple’s inter partes review petition challenging Smith Interface Technologies’ patent, emphasizing that less can be more when it comes to IPR strategy.

The Board’s February 13, 2025 decision in IPR2024-01086 rejected Apple’s petition – one of seven parallel petitions filed against the same patent – marking a clear stance against what some practitioners call “petition flooding.”

“[I]n most situations, one petition is sufficient to challenge a patent’s claims,” the Board emphasized, quoting its Trial Practice Guide. While acknowledging that multiple petitions might sometimes be necessary, the Board stressed that “this should be rare.”

Key Takeaway: The numbers matter. In this case, Apple challenged 91 unique claims across seven petitions targeting U.S. Patent No. 10,656,754, which covers technology for navigating between user interfaces. While the Board agreed that multiple petitions were warranted given the scope, it found seven to be excessive.

Apple’s Argument Falls Flat

Apple attempted to justify its approach by arguing that word count limitations necessitated multiple filings. According to Apple’s ranking notice, common sections across petitions “require[d] approximately 8,350 words,” leaving only “about 5,650 words per petition” for specific invalidity arguments.

The Board wasn’t convinced. “Petitioner has not persuasively shown that so many words were actually required for these sections,” the decision stated, noting that “although we agree that the common sections needed to be repeated in each petition…we are not persuaded that the common sections required approximately 8,350 words.”

Notably, the Board pointed out that one of the three independent claims “is only fifteen lines long, and its technology is relatively simple, yet Petitioner’s analysis of this claim stretches for seventeen pages.” Continue reading

In a recent IPR, the PTAB addressed whether a patent application (“Ueda”) filed before the challenged patent (“‘427 Patent”) was considered prior art in light of the Patent Owner’s evidence of an earlier date of invention and the proffered evidence submitted to establish it.

Peloton, as the petitioner, argued that “Ueda was filed on September 19, 2008 [and thus] qualifies as prior art under at least pre-AIA 35 U.S.C. § 102(e).” NEC Corporation, the patent owner, challenged Ueda prior art status by claiming earlier invention, stating that “the inventors of the ‘427 Patent conceived of the invention on or before August 6, 2008, and worked diligently to reduce the invention to practice with the filing of Japan Patent Application No. 2008-294270… on November 11, 2008.”

In addressing the issue, the Board’s analysis focused particularly on the evidence of diligence between conception and reduction to practice, i.e., the critical period. While they found corroborating evidence starting from November 6, 2008, when inventor Kunihiro Taniguchi transmitted a draft application to the Baba law firm, the critical period before this date lacked sufficient documentation.

As the Board explained: “Although Mr. Taniguchi doubtlessly spent substantial time preparing the application he completed on November 6, 2008, there is no corroborating evidence that this work was reasonably continuous during the critical period. As far as the corroborating evidence attests, Mr. Taniguchi could have done no work on the draft until early November, or he could have worked on the draft briefly in August and put it aside until early November.” Continue reading

In its Institution Decision, the Board addressed whether Trevarthen, a bachelor’s thesis from the University of Wollongong, qualified as prior art against U.S. Patent No. 9,844,206 B2. The Board emphasized that “at the institution stage, the petition must identify, with particularity, evidence sufficient to establish a reasonable likelihood that the reference was publicly accessible before the critical date of the challenged patent.”

The Board found persuasive evidence that Trevarthen was publicly available through multiple channels. Notably, the thesis was published in the University of Wollongong’s Research Online digital archive, which “ensures that ‘a digital copy’ of each reference… published in the digital repository ‘is available universally on the Internet and located through search engines such as Google and Yahoo.'”

The decision highlighted corroborating evidence from the Internet Archive showing “Trevarthen was available on ‘Research Online on September 7 and 12, 2007, and March 22, 2008.'” The Board also found significant that download statistics indicated “Trevarthen was downloaded hundreds of times before September 2008.”

Particularly compelling was the thesis’s citation in an International Search Report dated March 18, 2008. The Board noted that “a patent examiner’s identification of a reference through a search for the purposes of locating prior art ‘is highly probative evidence of public accessibility.'” Continue reading