by Matthew Johnson | May 23, 2018 | CBMs, Estoppel, Motions Practice, PTAB Trial Basics
By: Sue Gerber and Matt Johnson We recently reported some early observations about possible trends at the PTAB in the wake of the Supreme Court’s decision in SAS Institute Inc. v. Iancu. See Observations: Three Weeks After Supreme Court’s SAS Institute Decision. On...
by Matthew Johnson | May 4, 2018 | PTAB Trial Basics
By: Josh Nightingale and Matt Johnson On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that a decision to institute inter partes review under 35 U.S.C. § 314 may not institute on less all claims challenged in the...
by Matthew Johnson | Apr 26, 2018 | PTAB News
By: Matt Johnson, Greg Castanias, Gasper LaRosa, and Rich Graham Rumors of the PTAB’s demise were greatly exaggerated, it turns out. In a 7-2 decision, the Supreme Court held on Tuesday that Inter Partes Reviews (IPRs) violate neither Article III nor the Seventh...
by Matthew Johnson | Mar 27, 2018 | Amendment Practice, PTAB Trial Basics
By: Josh Nightingale and Matthew Johnson In its en banc decision in Aqua Products, Inc. v. Matal, the Federal Circuit addressed the question of who bears the burden of proving that claims amended in IPR proceedings are or are not patentable. The decision, issued on...
by Matthew Johnson | Mar 13, 2018 | PTAB Trial Basics
By: Matt Johnson The PTAB rules state that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent.” 37 C.F.R. § 42.105(a). Prompt service is important in IPRs because the Preliminary...
