Precedential Opinion Panel to Review Same-Party Joinder
By Tim Heverin In September, the Patent Office revised Standing Operating Procedure 2 (available here) to create a new review path for designating opinions precedential or informational. See PTAB Litigation Blog discussion of SOP 2 here. Under the new rule, the...
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IPR: New Evidence OK – New Theory NO
By Yang Li Ph.D. (Alex) and Matt Johnson Among the many differences from a patent litigation in a district court, the expedited nature of an inter partes review (IPR) brings with it an obligation for the petitioner to have a full-fledged legal theory of its case right...
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PTAB Denies “Same-Party” Joinder
By Tim Heverin In a recent “same-party” joinder opinion, the PTAB broke with previous decisions to hold that it did not have authority under 35 U.S.C. § 315(c) to join new issues to an instituted IPR. Proppant Express Investments, LLC. V. Oren Technologies, LLC, Case...
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PODCAST: After SAS Institute – A Shift in PTAB Patent Litigation Strategies
In its April 2018 decision in SAS Institute, Inc. v. Iancu, the U.S. Supreme Court held that when conducting an inter partes review, the U.S. Patent Office must determine the patentability of each of the claims challenged by the petitioner. Jones Day partners Dave...
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SCOTUS Rejects Petition To Review Section 325(d)
By Mike Lavine and Matt Johnson On November 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several previous validity...
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