by David Maiorana | Mar 12, 2018 | Claim Construction, PTAB Trial Basics
By: Dave Maiorana In previous posts, we have discussed whether the PTAB and the district courts can reach different conclusions on the same issue. (See Fed Circ Affirms Conflicting Invalidity Determinations from District Court and PTAB; Can PTAB and Courts Reach...
by David Maiorana | Jan 21, 2018 | 325(d) issues
By Dave Maiorana By now, most PTAB practitioners are familiar with 35 U.S.C. § 325(d), which gives the Board the authority to deny institution of a post-grant proceeding because the same or substantially the same prior art or arguments were previously presented to the...
by David Maiorana | Dec 13, 2017 | Federal Circuit, Trial Institution
By Dave Maiorana The PTAB’s practice of partially instituting IPRs has been in the news lately, with Jones Day recently arguing against that practice at the Supreme Court on behalf of the SAS Institute (“SAS”). On December 5, 2017, the week after the Supreme Court...
by David Maiorana | Oct 23, 2017 | Stay
By Allison Haugen and Dave Maiorana In August 2016, Google petitioned for Inter Partes Review of U.S. Patent No. 7,552,124 (owned by IXI Mobile), asserting that claims 1–10 are unpatentable. In March 2017, the PTAB instituted the IPR as to claims 1–5, but denied...
by David Maiorana | Sep 8, 2017 | PTAB Trial Basics
By Allie Terry and Dave Maiorana As we have previously discussed (on February 1, March 1, March 30, and May 19), reliance on secondary considerations of non-obviousness has been hit or miss for patent owners trying to convince PTAB panels that the secondary...
