by David Maiorana | Feb 25, 2019 | Final Written Decisions
By Jordan Powers and Dave Maiorana In SAS Institute v. Iancu, the Supreme Court held that when the PTAB institutes inter partes review under 35 U.S.C. § 314, it must decide the patentability of all claims the petitioner has challenged. SAS Institute left open the...
by David Maiorana | Jan 9, 2019 | PTAB News, Request for Reconsideration
By Dave Maiorana Under 37 C.F.R. § 42.5(d), communications with a Board member regarding a specific proceeding are not permitted “unless both parties have an opportunity to be involved in the communication.” This prohibition, however, does not extend to “referring to...
by David Maiorana | Nov 19, 2018 | Estoppel
By: David Maiorana In In re Certain Magnetic Tape Cartridges and Components Thereof, 337-TA-1058 (ITC October 2, 2018, Order), Administrative Law Judge Cheney ruled that even if a respondent is estopped from raising certain invalidity challenges because it failed to...
by David Maiorana | Nov 16, 2018 | 325(d) issues, CBMs
By Kait Crowder and Dave Maiorana Under 35 U.S.C. § 325(d), the PTAB has discretion regarding whether to institute a covered business method review if the arguments presented in the petition are the same, or substantially the same, as those previously considered by...
by David Maiorana | Sep 21, 2018 | Federal Circuit Appeal, Prior Art Issues, Uncategorized
By: Kaitlin Crowder and Dave Maiorana Any person or entity may file an IPR proceeding to invalidate a patent, regardless of whether it faces a specific threat of infringement. An adverse decision in an IPR proceeding is appealable only to the Federal Circuit. ...
