by Matthew Johnson | Mar 31, 2020 | 325(d) issues, PTAB News
By Josh Nightingale and Matt Johnson – As we noted here, the PTAB recently designated two 35 U.S.C. § 325(d) cases precedential and one informative. Here is an in depth review of a first of the precedential designated decisions. On March 24, 2020, the PTAB...
by Matthew Johnson | Mar 30, 2020 | 325(d) issues, PTAB News
By Matt Johnson – Last week, the PTAB designated two 35 U.S.C. § 325(d) cases precedential and one informative. These cases discuss the Board’s process for deciding when to use their discretion to deny institution because a Petition raises issues that the...
by David Cochran | Feb 19, 2020 | 325(d) issues, Trial Institution
By Dave Cochran – 35 U.S.C. § 325(d) gives the PTAB discretion to deny a petition for inter partes review when the same or substantially the same prior art or arguments were previously before the Office – including during original examination, reexamination, or...
by John Evans, Ph.D. | Aug 21, 2019 | 325(d) issues, Prior Art Issues
By John Evans and Dave Cochran The most persuasive IPR petitions offer fresh unpatentability theories never considered before. But petitions that simply repackage old issues often don’t gain traction. So, when you’re citing prior art that was before the Examiner...
by Gasper LaRosa | May 13, 2019 | 325(d) issues, Trial Institution
By Gasper LaRosa When exercising its broad discretion on whether to institute review, the PTAB is not limited to consideration of factors associated with the type of denial it ultimately issues. In a recent decision that the PTAB designated as precedential, the PTAB...
by Matthew Johnson | Dec 3, 2018 | 325(d) issues
By Mike Lavine and Matt Johnson On November 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several previous validity...
