325(d) And Printed Publication Issues Doom Petition
By John Evans and Dave Cochran The most persuasive IPR petitions offer fresh unpatentability theories never considered before. But petitions that simply repackage old issues often don’t gain traction. So, when you’re citing prior art that was before the Examiner...
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PTAB Determines Parallel ITC Record Did Not Create Tactical Advantage
By Levent Herguner and Matt Johnson In a recent decision, the PTAB decided to institute inter partes review (“IPR”) of U.S. Patent No. 7,937,394 B2 despite Patent Owner’s claims that Petitioner engaged in gamesmanship and asserted references and combinations that were...
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August Boardside Chat Recap Regarding Trial Practice Guide Update
By Albert Liou On August 8, 2019, the Patent Trial Appeal Board held a Boardside Chat webinar to discuss the July 2019 changes to the AIA Trial Practice Guide. Vice Chief Administrative Judges Michael Tierney and Tim Fink led the discussion on the various changes...
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PTAB Designates Three Decisions On Discretion To Institute Review
The PTAB recently designated two decisions as precedential and one decision as informative on discretion to institute review. Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) – (precedential as to section...
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Reexamination Stayed Pending IPR
By Sue Gerber and Matt Johnson Reexamination can be stayed pending IPR proceedings for good cause shown. The PTAB recently found good cause for a stay had been established when the reexamination proceedings and IPR proceedings had only a single claim in common, but...
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