Limited Fintiv Four Stip Unpersuasive
By Tom Ritchie - The PTAB considers the six Fintiv factors to determine whether to exercise its discretion to deny institution of an IPR petition in view of a parallel litigation. In that analysis, Fintiv factor four requires the PTAB to evaluate the overlap between...
Boardside Chat: SAS, MTAs, Fintiv, and Indefiniteness
By Andrea Beathard and Matt Johnson - On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials. First, Vice Chief Judge Michael Tierney discussed what he...
Follow-On Petitions Must Be Justified and Timely
By Sean Benevento*, Mike Lavine, and Matt Johnson - The PTAB recently held that the General Plastic factors weighed in favor of denying a follow-on IPR petition filed after the Patent Owner filed a preliminary response to an earlier petition challenging the same...
Request for Second Fintiv Preliminary Reply Denied
By Raffaella Faraoni and Carl Kukkonen - On January 19, 2021, Petitioner, 10X Genomics, requested via email authorization to file 1) a five page brief addressing the Board’s institution decision in Samsung Electronics Co., Ltd. v. Acorn Semi, LLC, IPR2020-01204, (Jan....
PTAB Greenlights Three Petitions Against One Patent
By Andrea Beathard, Sue Gerber, and Matt Johnson - Although the PTAB had previously stated that it would “rarely” be appropriate for a petitioner to file multiple petitions against the same patent, in Dolby Laboratories, Inc. v. Intertrust Technologies Corp., IPR...