Petitioner’s Proof of Printed Publication Falls Short
By Mike Lavine - On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether the “Dammann” reference,...
Federal Circuit Rules That Order Of Steps Sometimes Does Matter
By Simon Maxwell and Carl Kukkonen - Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents. A consortium...
PTAB Retains Jurisdiction Of Expired Patents
By Ellen Geyer and Matt Johnson - The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that the...
PTAB Rescinds Discretionary Denial Memorandum
By Ashvi Patel and Matt Johnson - On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.” That memorandum discussed Office...
Two Separate Analyses: Nonobviousness vs Enablement
By Sabrina Bellantoni and Matt Johnson - Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement. Duration Media...