Timing Is Key in PTAB’s Decision to Review Follow-On Petition by Different Party
By Cathy Chin Eng and Matt Johnson Relying on 35 U.S.C. § 314(a), the Patent Trial and Appeal Board has articulated its reluctance to review “follow-on” petitions challenging the validity of patents that have been previously subjected to inter partes review. As...
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NEWS: USPTO Issues Updates To PTAB Trial Practice Guide
The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in August 2012, concurrent with the promulgation of the AIA Trial Rules. A first...
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SDNY Rules Forum Selection Clause Does Not Bar IPR
By Alex Li and Matt Johnson On July 2, 2019, Judge Cote of the Southern District of New York issued an opinion that denied a motion for a preliminary injunction ordering the defendant to withdraw its petitions for inter parties review (“IPR”) at the Patent Trial and...
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PTAB Orders Petitioner’s Expert to Produce Discovery
By Marc S. Blackman The PTAB recently granted a Patent Owner’s motion to take additional discovery of Petitioner’s expert. In particular, the PTAB ordered Petitioner’s expert to produce documents that identify materials he reviewed in preparing his declaration. ...
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Mere Similarity Between References is Insufficient Rationale for Obviousness
By Grant Hebrank,* Josh Nightingale, and Matt Johnson On May 8, 2019, the Patent Trial and Appeal Board denied institution of inter partes review in William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, holding that the mere fact that prior art...
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