by John Marlott | Apr 16, 2020 | PTAB Trial Basics, Standing
By John Marlott – While acknowledging an “apparent loophole” in the America Invents Act, a district court has permitted an accused-infringer-DJ-plaintiff to pursue counterclaims for patent invalidity—with no bar on later seeking an IPR at the PTAB. Epic Games,...
by John Marlott | Mar 24, 2020 | Federal Circuit Appeal, PTAB News
By Nate Andrews, John Marlott, and Dave Maiorana On Monday, March 23, 2020, the Federal Circuit denied rehearing and rehearing en banc in the Arthrex appeal that found PTAB ALJs to be unconstitutional appointments. Arthrex, Inc. v. Smith & Nephew, Inc., No....
by John Marlott | Jan 31, 2020 | Federal Circuit Appeal
By John Marlott – In view of Arthrex, can an unsuccessful petitioner get a do-over of a PTAB decision denying institution of an IPR? The USPTO says no, and the Federal Circuit has been asked to consider the question in United Fire Protection v. Engineered...
by John Marlott | Dec 3, 2019 | Evidentiary Issues, Motions Practice
By John Marlott – While PTAB proceedings are ordinarily decided “on the papers,” in certain rare cases the Board will permit live witness testimony at the oral hearing. The Board’s precedential decision in K-40 v. Escort explains that “[t]he Board does not...
by John Marlott | Oct 1, 2019 | Stay
By John Marlott After SAS, does institution of an IPR make a district court more or less likely to stay a parallel litigation? Maybe, maybe not. In its April 2018 decision in SAS Institute v. Iancu, the U.S. Supreme Court ruled that the PTAB cannot take a selective,...
