by Matthew Johnson | Apr 9, 2020 | Federal Circuit Appeal, PTAB News, Request for Reconsideration
By Mike Lavine and Matt Johnson – On March 30, 2020, the Federal Circuit relied on Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) to vacate and remand several related PTAB decisions, including in proceedings where the patent owner did...
by Matthew Johnson | Feb 14, 2020 | Amendment Practice, Request for Reconsideration
By Levent Herguner and Matt Johnson – In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims. See Rimfrost AS v. Aker Biomarine...
by David Maiorana | Jan 9, 2019 | PTAB News, Request for Reconsideration
By Dave Maiorana Under 37 C.F.R. § 42.5(d), communications with a Board member regarding a specific proceeding are not permitted “unless both parties have an opportunity to be involved in the communication.” This prohibition, however, does not extend to “referring to...
by Jennifer Chheda, Ph.D. | Jan 4, 2019 | Real Party in Interest, Request for Reconsideration
By Jennifer Chheda Ph.D. and John Kinton The Patent Trial and Appeal Board (“PTAB”) recently denied the request of petitioner Fasteners for Retail, Inc. (“FFR” or “petitioner”) for rehearing in connection with decisions denying the institution of inter partes review...
by John Marlott | Oct 18, 2018 | Final Written Decisions, Request for Reconsideration, Trial Institution
By T. Kaitlin Crowder, John Marlott, and Dave Cochran The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other...
by Carl Kukkonen | Feb 5, 2018 | Estoppel, Federal Circuit, Federal Circuit Appeal, Request for Reconsideration
By: Amanda Leckman and Carl Kukkonen Eleven days after the Federal Circuit’s en banc opinion in Wi-Fi Onc, LLC v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), a three-judge panel granted a petition by patent owner Click-to-Call...
