PTAB Declines to Exercise Discretion Post-Markman
By Hannah Mehrle and Matt Johnson - Petitioner (Apple, Inc.) filed a petition to institute inter partes on a patent owned by Koss Corporation (Patent Owner). The PTAB considered six factors from Fintiv to assess whether to exercise authority to deny institution under...
Telepharma Disconnect: Federal Circuit Reverses PTAB on Obviousness
By Chris Hodge and Carl Kukkonen - On May 28, the Federal Circuit reversed a PTAB inter partes review (“IPR”) decision that held Baxter Corporation Englewood’s (“Baxter’s”) claims were not invalid under 35 U.S.C. § 103(a) obviousness based on three prior art...
Awkwardly Divided Petitions Triggers § 314(a) Denials
By Ashvi Patel,* Marlee Hartenstein, and Matt Johnson In Fantasia Trading LLC v. Cognipower LLC, IPR2021-00070, Paper 21 (May 20, 2021), the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) where Petitioner Fantasia Trading LLC...
PGRs Still Rare – Is Estoppel The Reason?
By John Marlott - A Post-Grant Review can be used to challenge newly-issued patents on wide-ranging grounds, but PGRs remain relatively unpopular: statutory estoppel may be a reason why. The America Invents Act (“AIA”) created new procedures for challenging the...
Final Written Decision Not Enough For Assertion Of Amended Claims
By Sarah Geers - Claims added or amended during inter partes review (“IPR”) do not become part of a patent until the Patent Office officially says so by issuing an IPR certificate under 35 U.S.C. § 318(b). The patentee needs more than a Final Written Decision (“FWD”)...