Precedential Order Confirms Involuntary Dismissal Triggers § 315(b) Time Bar
By Amanda Leckman and Carl Kukkonen On November 21, 2017, Petitioner Infiltrator Water Technologies, LLC, filed a Petition for inter partes review (IPR) of claims 8–12 of U.S. Patent No. 8,815,094 B2. In its Preliminary Response, filed on March 7, 2018, Patent Owner...
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Should You File A “Copycat” IPR Petition?
By Alex Li and Matt Johnson If you don’t have new grounds to add, you may as well copycat. On September 4, 2019, the PTAB denied Microsoft’s petition requesting inter partes review (“IPR”) of U.S. Patent No. 7,167,487 (“the ’487 patent”); furthermore, the panel also...
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“Exceptional” IPRs And § 285
By Kerry Barrett and John Evans Inter partes review (“IPR”) proceedings often arise in the context of high-stakes patent infringement litigation, and district courts frequently stay litigation pending parallel IPRs, which may fully resolve a patent-in-suit’s...
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PTAB Designates Precedential Decision Relating to Infringer’s Civil Action Barring IPR
By Geoffrey Gavin and Matt Johnson The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the patent. See...
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Strategic Decision to Forgo Expert Does Not Allow a “Second Bite”
By Emily Tait The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive” General Plastic factors. See...
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