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,...
by John Marlott | Aug 2, 2019 | CBMs, Patent Eligible Subject Matter
By John Marlott Is the little-used CBM patent review program the key to passage of § 101 legislation? Congress is currently considering legislation to drastically alter the patent eligibility statute, 35 U.S.C. § 101. The unabashed intent of the proposed legislation...
by John Marlott | May 23, 2019 | Trial Institution
By John Marlott – Section 112 indefiniteness issues—particularly in the context of means-plus-function claim limitations—can present difficult problems for IPR petitioners, and, sometimes, these § 112 problems can doom an IPR petition at the PTAB. The PTAB has...
