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PTAB Considers Efficiency When Deciding Motions to Submit Supplemental Information

PTAB Considers Efficiency When Deciding Motions to Submit Supplemental Information

by Matthew Johnson | May 23, 2018 | Motions Practice

By: Sean Benevento[1], Mike Lavine, and Matt Johnson After IPR institution, a party may file a motion to submit supplemental information so long as (1) the party requests authorization to file the motion within a month of the date the trial was instituted, and (2) the...
Avoiding Estoppel Is Not Good Cause To Withdraw Grounds After Institution

Avoiding Estoppel Is Not Good Cause To Withdraw Grounds After Institution

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...
Additional Discovery: Must Be More Than Mere Possibility

Additional Discovery: Must Be More Than Mere Possibility

by Tim Heverin | May 17, 2018 | Motions Practice

By: Tim Heverin The PTAB recently denied a motion for additional discovery that sought the production of documents argued to be relevant to inventorship.  In Watson Laboratories, Inc. v. United Therapeutics, Corp., Case IPR2017-01621 and -01622 (PTAB April 27, 2018)...
USPTO Director’s Alleged Conflict Not Imputed to PTAB Administrative Patent Judges

USPTO Director’s Alleged Conflict Not Imputed to PTAB Administrative Patent Judges

by Carl Kukkonen | May 14, 2018 | Motions Practice, PTAB Trial Basics

By: Stephanie Brooker and Carl Kukkonen The Patent Trial and Appeals Board (PTAB) recently denied a Motion to Dismiss asserting the presence of a conflict of interest of USPTO Director Andrei Iancu.  In St. Jude Medical, LLC. v. Snyders Heart Valve LLC, the Patent...
PTAB Denies Request to Submit Supplemental Information on Skill Level of POSITA

PTAB Denies Request to Submit Supplemental Information on Skill Level of POSITA

by Geoffrey Gavin | Jan 26, 2018 | Evidentiary Issues, Motions Practice, PTAB Trial Basics

By Geoffrey Gavin In a recent decision, the PTAB denied a petitioner’s request for authorization to file a motion to submit supplemental information directed to the level of ordinary skill in the art.  Ooma, Inc. v. Deep Green Wireless LLC, IPR2017-01541, Paper 14...

Amending Patent Claims in Inter Partes Review Proceedings

by Jones Day's PTAB Team | Nov 23, 2015 | Motions Practice

The inter partes review (“IPR”) statute authorizes a patent owner (“PO”) to “file, after an IPR has been instituted, one motion to amend the patent to: (i) cancel any challenged patent claim,” and “(ii) for each challenged claim, propose a reasonable number of...
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