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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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In a recent high-stakes patent litigation case, a protective order, filed on November 22, 2022, was put in place to safeguard confidential information during the course of the legal proceedings.  The defendant asserted that the plaintiff’s legal team had struggled to adhere to the protective order’s strict guidelines.

The first alleged violation involved a trial transcript containing sealed proceedings, which was sent from an associate at the plaintiff’s law firm, Williams & Connolly, to an associate at Morrison & Foerster, who is representing the plaintiff in separate IPR proceedings. This disclosure took place on July 18, 2023.

The second incident revolves around the plaintiff’s closing slide no. 298, which contained the defendants’ confidential Yesafili formulation. An associate at Williams & Connolly sent this slide to the plaintiff’s in-house counsel and to outside counsel in Canada. From there, the slide was disseminated to other members of the plaintiff’s in-house counsel team and to various international law firms.

The third and perhaps most concerning alleged violation involves the defendants’ BLA and other confidential information. The plaintiff’s in-house counsel sent this sensitive data to the Liad Whatstein firm in Israel, which handles patent litigation. Continue reading

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In a recent discovery dispute in a patent infringement case, the district court denied the defendant’s motion to compel the plaintiff to produce certain inventor emails that were withheld on the basis of the work product doctrine. The key issue was whether the plaintiff demonstrated that the emails, exchanged between the two inventors of the asserted patents from 2016-2018, were prepared in anticipation of litigation. The litigation ultimately commenced in February 2022.

The district court acknowledged that evidence pointed to by both sides benefitted their respective positions–the defendant highlighted facts suggesting the inventors’ work was not in anticipation of litigation, while the plaintiff provided contrary evidence. Ultimately, the district court found the plaintiff’s showing sufficient to meet its burden and justify the work product protection.

Key evidence cited by the district court included:

  1. An inventor’s testimony that he began investigating potential infringement in November 2015 with the assistance of outside counsel.
  2. The inventor provided information to outside counsel from 2016-2020 to assess possible infringement.
  3. Starting November 2015, the inventor implemented measures to preserve documents related to the patents and defendant.
  4. Testimony from the outside attorney that he had previously advised the plaintiff about potential litigation involving the patents at issue.

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In the ongoing patent infringement case between Acceleration Bay LLC and Activision Blizzard Inc., the district court recently issued an order resolving several important evidentiary disputes between the parties. This order provides guidance on the admissibility of various categories of evidence that will impact the damages case at the upcoming trial.

Here are the key takeaways:

Survey Evidence Allowed for Limited Purpose

The court permitted Acceleration Bay to use Activision’s own customer surveys for the limited purpose of showing that the allegedly infringing large multiplayer game modes in Call of Duty are of equal or greater importance to customers compared to the non-infringing small game modes. Nonetheless, the district court reiterated its exclusion of the plaintiff’s damages expert’s opinions apportioning royalties based primarily on this survey evidence, finding that while the surveys can demonstrate the significance of the accused modes, they cannot directly calculate the royalty damage amount.

Evidence of Foreign World of Warcraft Sales Permitted

The district court allowed Acceleration Bay to present evidence of Activision’s foreign sales revenues for the World of Warcraft game. The plaintiff’s theory is that the infringing U.S.-based server system supports foreign players in North and South America. The district court found that as long as Acceleration Bay provides evidence linking the foreign sales to the accused domestic server system, the foreign revenue numbers can be admitted, even if conditionally at first. Continue reading

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In a recent development in patent litigation, the district court has granted a motion to dismiss counterclaims in a case involving U.S. Patent No. 10,519,668 (“the ‘668 Patent”). The decision sheds light on the importance of adhering to meet and confer obligations, as well as the consequences of non-compliance.

Background:

The defendants in this case had asserted counterclaims, including declaratory judgments of invalidity and non-infringement of the ‘668 Patent, breach of contract, fraud, unjust enrichment, and constructive trust.  On October 31, 2023, the district court granted the defendants’ Motion for Summary Judgment of non-infringement of the ‘668 Patent, marking a significant milestone change in the proceedings.

Subsequent Events:

Following the district court’s decision, the defendants’ counsel sought to engage in a meet and confer with the plaintiff, Upstream, regarding the possible dismissal of the counterclaims without prejudice. Despite making multiple attempts to contact Upstream’s counsel between March 19 and 27th, no response was received. Consequently, the defendants proceeded to file a motion to dismiss their counterclaims on March 29, 2024. Continue reading

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In the ongoing case of Inmar Brand Solutions, Inc. v. Quotient Technology Inc., the district court was tasked with conducting an analysis under the Supreme Court’s two-step test in Alice Corp. v. CLS Bank International to determine whether Inmar’s patented coupon-processing system, exclusively licensed from Intelligent Clearing Network, Inc. (ICN), was entitled to patent protection. Under the Alice framework, the district court must first ascertain whether claims are directed towards patent-ineligible subject matter, such as abstract ideas. If so, the district court proceeds to the second step, wherein it evaluates whether the claims contain an inventive concept that transforms the abstract idea into a patent-eligible application.

Quotient contends that the patents asserted by Inmar are invalid and directed towards a patent-ineligible abstract idea: namely the processing of coupons on a remote server. According to Quotient, the claims lack an inventive concept and merely recite generic computer components.

Inmar opposes this characterization, and contends that the claims represent an improved coupon processing architecture that significantly reduces fraud and cannot be accomplished by humans.

As explained by the district court, the primary concern underlying this argument is the concept of preemption, which aims to prevent the granting of a monopoly over an abstract idea that could impede innovation. While the Supreme Court in Alice did not provide precise contours for what constitutes an abstract idea, subsequent Federal Circuit decisions have shed light on this issue. Continue reading