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PTAB Rules Certificate of Correction is Not Retroactive in IPR

PTAB Rules Certificate of Correction is Not Retroactive in IPR

by Kenneth Luchesi | Feb 21, 2020 | PTAB News

By Kenny Luchesi – On remand from the Federal Circuit, the PTAB ruled that a patentee’s certificate of correction—issued after the Board invalidated the claims in a final written decision—could not be applied retroactively. After the IPR petition was filed, the...
New Theories Not Permitted In IPR Reply Brief

New Theories Not Permitted In IPR Reply Brief

by Kenneth Luchesi | Oct 10, 2019 | Federal Circuit

By Kenny Luchesi In Henny Penny Corp. v. Frymaster L.L.C., No. IPR2016-01435, (P.T.A.B. Mar. 16, 2017), the petitioner (HPC) challenged certain claims of U.S. Patent No. 8,497,691, owned by HPC’s competitor, Frymaster. The ’691 patent relates to deep fryers, and is...
No Basis For Broad Exclusion Of Inventor Testimony

No Basis For Broad Exclusion Of Inventor Testimony

by Kenneth Luchesi | Jun 17, 2019 | Evidentiary Issues, Trial Institution

By Kenny Luchesi The Board has broad discretion to determine how much weight should be given to inventor testimony, but as long as the testimony does not relate to the inventor’s opinion about the meaning of a claim term, there is no basis for broadly excluding all...
The PTAB Must Address All Grounds, Even After Final Written Decision

The PTAB Must Address All Grounds, Even After Final Written Decision

by Kenneth Luchesi | Jan 25, 2019 | Federal Circuit Appeal, Final Written Decisions

By Kenny Luchesi Amazon.com, Inc. and Blizzard Entertainment, Inc. (“Amazon”) filed a petition for inter partes review challenging the validity of AC Technologies S.A.’s (“AC”) U.S. Patent No. 7,904,680.  See IPR2015-01802.  Amazon asserted three grounds of...
Typical Supplier/Co-Defendant Is Not An RPI Or Privy

Typical Supplier/Co-Defendant Is Not An RPI Or Privy

by Kenneth Luchesi | Dec 14, 2018 | Real Party in Interest

By Kenny Luchesi –  In a recently published decision, the PTAB held that Samsung’s petition for inter partes review of a patent owned by The SEVEN Networks LLC was not time-barred under § 315(b).  Samsung filed its petition less than one year after being...
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