Case Summary: Prestige Jewelry Int’l v. Wing Yee Gems & Jewelry, No. 11-CV-2930 (SDNY Sept. 15, 2014)

October 17, 2014

By Peter Siddoway

Counsel in Myers Bigel’s Litigation Group

This recent District Court opinion addresses the distinction between ornamental and functional designs in design patents.

Design patent protection is available for “any new, original and ornamental design for an article of manufacture.”  35 U.S.C. § 171.  However, unlike utility patents, “a design patent concerns the appearance of an object, not its usefulness.”  Opinion, at 19-20.  However, the line between ornamental and functional designs is not always clear.

Read More

Post-Grant Proceedings Statistics Available Weekly

November 27, 2013

Anthony-DerosaBy Anthony DeRosa

For those of you who love numbers, the USPTO releases updated statistics every week on the progress of the AIA post-grant proceedings, which include inter partes review (IPR), post grant review (PGR), and covered business method (CBM) proceedings.  These statistics are generally released every Friday and are broken down by USPTO fiscal year, which is October 1 to September 30.
Read More

First Inter Partes Review Decision Issued by The PTAB

November 18, 2013

Peter-SiddowayBy Peter Siddoway –

The PTAB has issued its first Final Written Decision in an inter partes review (IPR).  On Wednesday, the Board issued its decision in Garmin v. Cuozzo (IPR2012-00001) in favor of the petitioner, cancelling all of the patent claims at issue in the trial.

The Garmin IPR was the first IPR filed and the first IPR to be instituted by the Board.  Through its entire pendency, this case has been of great interest to those of us following the new AIA post-grant procedures.  The Board’s ruling in March on the patent owner’s Motion for Additional Discovery generated a great deal of commentary (for example, from Professor Hal Wegner), and the oral hearing in the proceeding was made available to the public via conference call (audio).
Read More

Will the Real Party-in-Interest Please Stand Up?

November 2, 2013

Anthony-DerosaBy Anthony P. DeRosa

Parties to an inter partes review (IPR) proceeding must identify all the real parties-in-interest.  37 C.F.R. § 42.8(b)(1).  This assists “members of the Board in identifying potential conflicts” and assures “proper application of the statutory estoppel provisions.”  Trial Practice Guide, 77 F.R. 48759 (Aug. 14, 2012).  It is the latter reason that is of real significance because it “seeks to protect patent owners from harassment via successive petitions by the same or related parties, to prevent parties from having a ‘second bite at the apple,’ and to protect the integrity of both the USPTO and Federal Courts by assuring that all issues are promptly raised and vetted.” Id.
Read More

Effect of Dismissed Litigation on IPRs

October 24, 2013

Peter-SiddowayBy Peter Siddoway –

Last week, an article posted here summarized the PTAB’s decision not to institute a trial in St. Jude Med. v. Volcano Corp., IPR2013-00258.  This decision also highlighted an issue that has arisen in several inter partes review (IPR) decisions: whether a previously-filed litigation will serve as a bar to the institution of an IPR trial.  In St. Jude and other IPRs, the Board’s decision turned on whether the related litigation had been dismissed without prejudice or with prejudice.
Read More

“Complaint” in § 315(b) Includes Counterclaims

October 20, 2013

Peter-SiddowayBy Peter Siddoway –

A petition for inter partes review (IPR) must be filed within one year of the petitioner being served “with a complaint alleging infringement of the patent.”  35 U.S.C. § 315(b).  On Wednesday, the PTAB held that this statutory phrase “is sufficiently broad to include a counterclaim that alleges infringement of the patent.”  IPR2013-00258, Paper 29, p. 7 (October 16, 2013).
Read More

Panel of PTAB Judges at the AIA Anniversary Forum

October 10, 2013

Peter-SiddowayBy Peter D. Siddoway

As we posted here a few weeks ago, the USPTO hosted an America Invents Act (AIA) Second Anniversary Forum on Monday, September 16, 2013.  Part of the Forum included four judges from the Patent Trial and Appeal Board (PTAB) discussing Administrative Trials under the AIA, including inter partes review, covered business method review, and post grant review.  The judges on the panel were Chief Judge Smith, Vice Chief Judge Boalick, Lead Judge Gianetti, and Judge Medley.
Read More

I Only Get How Many Pages?

September 17, 2013

Anthony-DerosaBy Anthony P. DeRosa –

Nearly 500 petitions for inter partes review have been filed since the Patent Office implemented the AIA post-grant proceedings, and one of the initial challenges faced by petitioners and patent owners alike has been meeting the strict page limit requirements.  In our experience, the current page limits are manageable with careful and concise drafting, but are an issue for which the drafter must always be cognizant.
Read More

USPTO Hosting AIA Second Anniversary Forum

September 5, 2013

Peter-SiddowayBy Peter D. Siddoway

The USPTO has announced that it will host an America Invents Act (AIA) Second Anniversary Forum on Monday, September 16, 2013, from 1:00 to 5:00 p.m.  It will be held at the USPTO and will also be webcast.  Of particular interest to those of us following inter partes review and other post-grant proceedings, the Forum is scheduled to include judges from the Patent Trial and Appeal Board (PTAB) discussing “various provisions of the patent law, focusing on filings made during the past several months with tips for compliance.”
Read More

Resources for IPR Procedures, Rules, Submissions and Decisions

August 30, 2013

Lynne A. BorchersBy Lynne A. Borchers

During the course of preparing and filing inter partes review (“IPR”) petitions, we found that there is not a centralized location or source that contains IPR procedures and rules, particularly one that includes easily searchable submissions and decisions from the Patent Trial and Appeal Board (“PTAB”).
Read More