by Geoffrey Gavin | Sep 12, 2019 | PTAB Trial Basics, Standing
By Geoffrey Gavin and Matt Johnson The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the patent. See...
by Matthew Johnson | Aug 27, 2019 | PTAB Trial Basics, Time Limits
By Tom Ritchie and Matt Johnson The PTAB Precedential Opinion Panel (“POP”) has concluded that the one-year time bar for filing an IPR petition under 35 U.S.C. § 315(b) is triggered by the service of a complaint alleging infringement even if “the serving party lacks...
by Matthew Johnson | Jul 23, 2019 | Amendment Practice, Claim Construction, PTAB News, PTAB Trial Basics
By Catharina Chin Eng and Matt Johnson On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The original...
by Matthew Johnson | Jun 5, 2019 | PTAB Trial Basics, Trial Institution
By Sue Gerber and Matt Johnson Petitioners beware. The PTAB will not “play archaeologist with the record” or assume the burden of making arguments if the Petitioner fails to present the asserted reasons for invalidity with the required specificity. Amazon Web...
by Matthew Johnson | Apr 3, 2019 | PTAB Trial Basics, Trial Institution
By Levent Herguner and Matt Johnson In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny inter partes review of Perfect Company’s (“Patent Owner”) patent. Adaptics Ltd. v. Perfect Co., IPR2018-01596 (March 6, 2019). A panel of...
by Matthew Johnson | Apr 1, 2019 | PTAB Trial Basics
By Kenny Luchesi In a recent decision that the PTAB designated as precedential, the Board denied a patent owner’s request to provide live testimony from the inventor of the challenged patent at the oral hearing. In DePuy Synthes Products, Inc. v. MedIdeam LLC, Case...
