Be Careful Basing Your IPR On Previously Considered Prior Art
By Dave Maiorana It is not always possible for a party seeking to challenge a patent in an IPR to find prior art patents or printed publications that the USPTO has not already considered. Often the best available prior art comes from the references cited to (or by)...
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PTAB Denies Timely, Relevant Supplement to Petition
By Christian Damon and John Marlott By rule, a petitioner may request permission from the Board to submit supplemental information in an IPR proceeding if: (1) the request is filed within one month of the Board’s institution decision, and (2) the supplemental...
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Are Inter-Partes-Review Proceedings Constitutional? Supreme Court Will Weigh In
By Greg Castanias, Sasha Mayergoyz, Stuart Yothers, and Daniel Kazhdan Today, the Supreme Court agreed to hear a challenge to the constitutionality of inter partes review. In Oil States Energy Services v. Greene’s Energy Group, No. 16-712, the Court agreed to decide...
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District Court deference to PTAB regarding priority claim? Not necessarily.
By Jaime Choi and Dave Cochran In instituting IPR of a particular patent, the PTAB found that the patent was not entitled to its priority claim, thus opening it up to invalidity attacks. However, because the PTAB’s decision was not being challenged in the District...
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Federal Circuit Upholds Claim Construction – No Due Process Violations
By Stephanie Brooker and Carl Kukkonen On May 8, 2017, in Intellectual Ventures II LLC v. Ericsson Inc., 15-1739, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB) inter partes review (IPR) claim constructions in a non-precedential decision. ...
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