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The PTAB’s decision provides important guidance on when online product listings can qualify as prior art, particularly focusing on the challenges of establishing publication dates for Amazon listings.

Key Legal Standard

The Board emphasized that for an inter partes review, petitioners can only challenge patentability “on the basis of prior art consisting of patents or printed publications.” The key test is whether the reference was “publicly accessible.” As the decision explains, “A reference will be considered publicly accessible if it was disseminated or otherwise made available to the extent that persons interested and ordinarily skilled in the subject matter or art exercising reasonable diligence can locate it.”

Amazon Listings as Evidence

The petitioner, Vectair Systems, attempted to use Amazon product listings for a urinal screen showing a “Date First Available” of May 10, 2013 as evidence of prior publication, preceding the challenged patent’s purported priority of November 5, 2014. However, the Board rejected this approach, citing previous decisions that explain why such dates are insufficient:

“[T]he date that a product was listed as first available on a website . . . is not sufficient evidence that the content of the listing, including the photographs depicted therein, were published at that time.”

The Board explained the practical reasoning behind this position:

  • Product listings may be updated over time
  • Photographs of products may change
  • A “first available” date doesn’t prove when specific content appeared

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In a recent Patent Trial and Appeal Board (PTAB) decision, the Board denied institution of an inter partes review (IPR) in Cambridge Mobile Telematics, Inc. v. Sfara, Inc. (IPR2024-00966), highlighting the critical importance of consistent claim construction strategies in patent challenges.

The Core Dispute

The controversy centered on Cambridge Mobile’s approach to construing the claimed “component” terms in U.S. Patent No. 9,333,946 B2. The patent owner, Sfara, Inc., argued for denial based on Cambridge Mobile’s divergent claim construction positions between district court litigation and the IPR petition.

In district court proceedings, Cambridge Mobile advocated for means-plus-function construction under 35 U.S.C. § 112(f), contending the terms were indefinite. However, in their IPR petition, they simply argued for “plain and ordinary meaning” without explaining this shift in position or providing an alternative means-plus-function construction.

Regulatory Framework

The dispute brought Rule 104(b)(3) into sharp focus. This regulation requires IPR petitions to explicitly state how challenged claims should be construed. For means-plus-function claims, petitioners must identify specific portions of the specification describing corresponding structure for claimed functions.

The significance of this requirement is underscored in the USPTO’s Consolidated Trial Practice Guide, which warns that petitioners who fail to address § 112(f) construction “risk failing to satisfy the requirement of 37 C.F.R. § 42.104(b)(3).” Continue reading

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In a recent Patent Trial and Appeal Board (PTAB) decision, the particularity requirement emerged as a critical factor in determining whether to institute an inter partes review (IPR). The case, involving IKEA Supply AG’s challenge to Everlight Electronics’ LED patent, highlights how failing to meet this requirement can doom even technically meritorious patent challenges.

Understanding the Particularity Requirement

The particularity requirement, codified in 35 U.S.C. § 312(a)(3), demands that IPR petitions identify “with particularity, each claim challenged, the grounds on which the challenges to each claim are based, and the evidence that supports the grounds for challenge to each claim.” As the Federal Circuit emphasized in Intelligent Bio-Sys., Inc. v. Illumina Cambridge Ltd., “It is of the utmost importance that petitioners in the IPR proceedings adhere to the requirement that the initial petition identify ‘with particularity’ the ‘evidence that supports the grounds for the challenge to each claim.'”

Why Particularity Matters

The requirement serves multiple purposes: it ensures efficient review, provides fair notice to patent owners, and prevents what some practitioners call “kitchen sink” petitions that overwhelm both the Board and respondents with numerous alternative theories. Continue reading

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The U.S. Patent Trial and Appeal Board (PTAB) has denied Petitioner’s Shenzhen Waydoo Intelligence Technology Co., Ltd.’s petition for inter partes review (IPR) and accompanying motion for joinder in a case involving MHL Custom, Inc.’s Patent No. 9,359,044 B2.

The decision, issued on December 17, 2024, centers on Waydoo’s attempt to join an existing IPR challenge (IPR2024-00086) filed by Foil Boarding Company. The Board’s denial primarily stemmed from two key factors: Waydoo’s previous unsuccessful challenge to the patent’s validity in district court and the company’s unexplained three-and-a-half-year delay in seeking IPR review.

Importantly, Waydoo had already contested the ‘044 patent’s validity in a previous district court case using substantially similar grounds, including the same prior art references (Evolo Report and Woolley). In that case, a jury not only upheld the patent’s validity but also found that Waydoo had willfully infringed it.

The Board emphasized that Congress intended inter partes reviews to serve as alternatives to district court litigation, not additional venues for repeated challenges. The decision referenced the House Report on the America Invents Act, which explicitly warned against using IPR proceedings as “tools for harassment or a means to prevent market entry through repeated litigation and administrative attacks.”

The Board found particular significance in Waydoo’s failure to explain why it waited more than three years after being served with the initial infringement complaint before filing its IPR petition. Under normal circumstances, petitioners must file IPR challenges within one year of being served with an infringement complaint, though this deadline can be waived for joinder requests. Continue reading

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The Patent Trial and Appeal Board (PTAB) has denied Juniper Networks’ second petition for inter partes review (IPR) challenging claims of Orckit Corporation’s US Patent 10,652,111, which covers deep packet inspection methods in software-defined networks. The decision, issued on December 11, 2024, was based on the Board’s discretionary powers under 35 U.S.C. § 314(a).

The Board’s denial relied heavily on the precedential General Plastic factors, which are non-exhaustive and guide decisions about multiple petitions against the same patent. In a detailed analysis of those factors, the Board found that Juniper’s second petition targeted essentially the same claims as its first petition, despite Juniper’s arguments to the contrary. The Board conducted a careful comparison of the challenged claims 32-54 with previously challenged claims 1-31, determining that they were either identical or had no material differences in scope.

Significantly, the Board found evidence that Juniper was aware of the prior art references (Lefebvre, Chua, and Rash) cited in its second petition long before filing its first petition. Patent Owner Orckit provided documentation showing Juniper’s knowledge of these references dating back to 2016-2020, contradicting Juniper’s unsupported assertion of recent discovery. Continue reading

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In a noteworthy decision that sheds light on the interplay between patent disclaimers and post-grant reviews, the Patent Trial and Appeal Board (PTAB) recently denied institution of a challenge to an Intex Marketing patent while declining to enter adverse judgment against the patent owner.

On June 15, 2024, Bestway (USA), Inc. petitioned for post-grant review of all 24 claims in U.S. Patent No. 11,959,512 B2. In what proved to be a strategic maneuver, Intex Marketing responded by filing a statutory disclaimer of all challenged claims, effectively surrendering their rights to the patent. This move raised an important question for the Board: should they simply deny institution, or take the additional step of entering adverse judgment against Intex?  In its October 28, 2024 decision, the Board opted to take the former approach.

The distinction between these two outcomes carries significant implications for patent owners. An adverse judgment would trigger estoppel provisions preventing Intex from obtaining or enforcing patents with substantially similar claims. This became particularly relevant because the ‘512 patent belongs to a family that includes three other granted patents and pending continuation applications.

In deciding against adverse judgment, the Board emphasized several crucial factors. First, Intex had never asserted or threatened to assert the ‘512 patent against Bestway. While Bestway argued it had incurred “significant expense” preparing its petition in response to what it characterized as “harassing” cease-and-desist letters regarding related patents, the Board found this insufficient justification for adverse judgment. Continue reading

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In a significant ruling that clarifies the standards for expert disqualification in patent litigation, the U.S. District Court for the Eastern District of California has denied E. & J. Gallo Winery’s motion to disqualify Dr. Mark Greenspan, an expert witness for Vineyard Investigations. The December 2, 2024 order provides crucial guidance on the treatment of technical information in expert disqualification analyses and the interpretation of protective orders in patent cases.

Case Background

The underlying dispute involves Vineyard Investigations’ allegations that Gallo infringed patents related to variable rate drip irrigation systems. The controversy arose when Vineyard Investigations designated Dr. Greenspan, a former Gallo employee, as an expert witness. Dr. Greenspan had worked for Gallo between 1996 and 2005 as an irrigation specialist and Winegrowing Research and Development Manager.

Key Legal Framework

The court’s analysis centered on two potential grounds for disqualification, as articulated in the order:

“There are two relevant bases on which Defendant moves Dr. Greenspan be disqualified: (1) an exercise of a trial court’s inherent discretion and (2) pursuant to Section 2.6 of the protective order.”

The court emphasized that “disqualification is a drastic measure that courts should use reluctantly and rarely,” setting a high bar for excluding expert testimony.

Critical Holdings

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On July 26, Stan Gibson will participate in a Strafford webinar discussing considerations that need to be taken into account when in-house counsel is noticed or subpoenaed for a deposition. Program details and a registration link are below. We hope to see you there!

Taking or Defending Depositions of In-House Counsel: Strategic, Substantive, and Ethical Considerations

Date: Tuesday, July 26, 2022

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This weekend I took part in the 4x4x48 challenge created by David Goggins— running 4 miles every 4 hours for 48 hours for a total of 48 miles. At times, the run was both exhilarating and exhausting, particularly those midnight and 4 am runs on minimal sleep. The donations and wide ranging support fueled my inspiration to complete the challenge!

A special thanks to the many donors and supporters that helped me raised over $13,000 for the Special Forces Warrior Foundation. Their mission is to provide educational support for the surviving children of Special Operations personnel who lose their lives in the line-of-duty and the children of Special Operators awarded the Medal of Honor and to provide immediate financial grants to severely wounded, ill, and injured Special Operations personnel who require hospitalization. A link to the donation page is: https://give.specialops.org/campaign/stan-gibsons-4x4x48-challenge/c324132

Thank you,

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A common refrain is that an invention is only as valuable as the patent that protects it. But what happens when you cannot secure the patent? This is a frequent hurdle for inventors seeking to patent products utilizing artificial intelligence (AI). While still in its infancy, at least compared to the lofty expectations of technology enthusiasts, AI has proven integral to driving innovation, but it has also proven equally vexing to fit into the intellectual property legal regime.

In the article, “How to Safeguard AI Technology: Patents versus Trade Secrets,” JMBM attorneys Stanley M. Gibson and Samuel R. Buchman discuss the potential advantages of using trade secret protection where patent protection cannot be obtained.

Read the article on IPWatchdog.com. Continue reading