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...
by David Maiorana | Mar 12, 2018 | Claim Construction, PTAB Trial Basics
By: Dave Maiorana In previous posts, we have discussed whether the PTAB and the district courts can reach different conclusions on the same issue. (See Fed Circ Affirms Conflicting Invalidity Determinations from District Court and PTAB; Can PTAB and Courts Reach...
by Joe Sauer | Feb 27, 2018 | PTAB News, PTAB Trial Basics
By: Tom Koglman and Joe Sauer In a case of first impression, the PTAB recently decided that the doctrine of tribal sovereign immunity does not apply to inter partes review proceedings. See Mylan Pharmaceuticals Inc. v. Saint Regis Mohawk Tribe, IPR2016-01127;...
by John Marlott | Feb 21, 2018 | PTAB Trial Basics
By: John Marlott The AIA expressly anticipates and permits a patent owner and a petitioner to reach a settlement during the pendency of a post-grant proceeding. For IPRs, 35 U.S.C. § 317(a) is entitled “Settlement” and provides, in pertinent part: An inter partes...
by John Evans, Ph.D. | Feb 6, 2018 | Evidentiary Issues, Prior Art Issues, PTAB News, PTAB Trial Basics
By: Jaime Choi, Tracy Stitt, and John Evans On February 1, the PTAB held its first “Boardside Chat” of 2018, which featured three judges discussing appeals and AIA trial proceedings for design patents. Not only are such proceedings less common for design patents...
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...
