Don’t Wait To Seek Discovery Or It May Be Too Late
By Sue Gerber and Matt Johnson - “The statutory provisions for inter partes reviews, post-grant reviews, and covered-business method patent reviews caution against overly broad discovery and provide the same considerations, including efficient administration of the...
PTAB Denies Institution of Maize-Directed PGR
By Shane Padilla, Owen Carpenter, and Matt Johnson - On September 24, 2024, the PTAB denied institution of a post-grant review proceeding initiated by Inari Agriculture, Inc. (Petitioner) against Pioneer Hi-Bred International, Inc. (Patent Owner). The patent at issue...
Imprecise Claim Charts and Improper Incorporation By Reference Result in Institution Denial
By David Linden and Dave Maiorana - On March 23, 2024, Nearmap US, Inc. (“Nearmap”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 10,671,648 (“the ’648 Patent”) (“IPR716”), assigned to Eagle View Technologies, Inc. (“Eagle View”). The ’648...
Citing Issued Patent Instead of Pre-Grant Publication Almost Costs Petitioner
By Sabrina Bellantoni and Matt Johnson - Recently, the Patent Trial and Appeals Board (“PTAB”) released a final written decision finding no challenged claims were unpatentable in Duration Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 74 (August 19, 2024). Of...
PTAB Rule Permits Solo Representation and Automatic Pro Hac Vice Admission
By Nicholas D'Andrea and Matt Johnson - On October 10, 2024, the USPTO issued a final rule allowing parties to proceed without backup counsel in AIA proceedings and implementing an automatic admission process for pro hac vice attorneys. Full text of the final rule...