by Matthew Johnson | Mar 19, 2021 | PTAB Trial Basics, Trial Institution
By Sachin Patel and Matt Johnson – The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite. On June...
by Matthew Johnson | Feb 3, 2021 | PTAB Trial Basics, Trial Institution
By Andrea Beathard, Sue Gerber, and Matt Johnson – Although the PTAB had previously stated that it would “rarely” be appropriate for a petitioner to file multiple petitions against the same patent, in Dolby Laboratories, Inc. v. Intertrust Technologies Corp.,...
by John Marlott | Jan 13, 2021 | PTAB Trial Basics
By John Marlott and Nick Bagnolo – In post-grant proceedings since 2018, the PTAB has applied the same claim construction standard as used in district court; a recent Memorandum confirms the PTAB will likewise apply the same standard that district courts use for...
by Matthew Johnson | Dec 17, 2020 | PTAB News, PTAB Trial Basics
By Hannah Mehrle and Matt Johnson – In a non-precedential opinion, the Federal Circuit recently reaffirmed that state universities cannot use sovereign immunity to avoid patent challenges at the PTAB stating that, “sovereign immunity does not apply to IPR...
by David Maiorana | Oct 15, 2020 | PTAB Trial Basics, Standing
By Dave Maiorana – It is well-established that a counterclaim for invalidity in a district court litigation does not trigger the 35 U.S.C. § 315(a) bar. See 35 U.S.C. § 315(a)(3). See also our previous posts here and here discussing strategies for declaratory...
by Matthew Johnson | Jun 2, 2020 | Evidentiary Issues, PTAB News, PTAB Trial Basics, Trial Institution
By Christian Roberts* and Matt Johnson – On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for...
