Trial Court Denies Amendment of Contentions To Add Reexam Claims Following Successful IPR
By Gasper LaRosa and Stephanie M. Brooker What happens when patent claims are found unpatentable in inter partes review (“IPR”) and new claims are subsequently added to that patent through ex parte reexamination? The District Court for the Northern District of...
read more
IPR Goes Forward Despite Late Stage Parallel ITC Investigation
By: Yury Kalish and Vishal Khatri – Since their inception as part of the AIA, inter partes reviews (IPRs) have been a favorite tool in the arsenal of patent challengers. Their statutorily mandated 18-month schedule oftentimes allows the PTAB to resolve a question of...
read more
PTAB Judges Discuss Recent Procedure Changes in Boardside Chat
By Albert Liou The Patent Trial and Appeal Board held a Boardside Chat on October 10, 2019, discussing the various recent changes made to PTAB procedures. The panel discussion featured Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim...
read more
Preemptive Declaratory Judgment Invalidity Counterclaims Trigger Statutory Bar
By Sue Gerber and Matt Johnson Last year, this blog discussed various strategic considerations for litigants seeking declarations of invalidity in district court actions to avoid being precluded from also seeking inter partes or other post-grant review before the...
read more
New Theories Not Permitted In IPR Reply Brief
By Kenny Luchesi In Henny Penny Corp. v. Frymaster L.L.C., No. IPR2016-01435, (P.T.A.B. Mar. 16, 2017), the petitioner (HPC) challenged certain claims of U.S. Patent No. 8,497,691, owned by HPC’s competitor, Frymaster. The ’691 patent relates to deep fryers, and is...
read more