When Is A Timely IPR Petition Not Timely Enough?
By: Marc Blackman – The PTAB considered a patent owner’s argument made in a POPR that a timely filed petition for IPR, i.e. a petition filed before the one year statutory bar following service of a complaint for patent infringement, is not actually timely where the related litigation is in an advanced stage.
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PTAB Denies Institution Of Follow-On Petition From Similarly Situated Defendant
By: Tom Ritchie and Matt Johnson – A recent PTAB decision considered a follow-on petition for IPR in view of a prior filed petition by a different, but similarly situated, petitioner.
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After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners
By: John Marlott – A recent PTAB decision raises new unresolved estoppel issues post-SAS where the PTAB refused to find means-plus-function claims unpatentable; being indefinite, the scope and meaning of the claims could not be ascertained such that the differences between the claims and the asserted prior art could not be determined. Nevertheless, these claims were subject to the PTAB’s FWD potentially implicating § 315(e) estoppel.
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Failure to Appeal After SAS Results in Estoppel as to Non-Instituted Grounds
By: Kenneth S. Luchesi – A district court considered the scope of IPR estoppel where a petitioner in a partially instituted inter partes review failed to appeal the Board’s final written decision as to less than all challenged claims post-SAS where SAS issued during petitioner’s period for appeal.
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Petitioners Be Mindful Of Decisions In Related IPRs
By: Susan M. Gerber and Matt Johnson – A recent PTAB decision provides a strong reminder of why Petitioners must consider decisions from related IPRs when making arguments before the PTAB.
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