by David Cochran | May 4, 2020 | Trial Institution
By Dave Cochran and Robby Breetz – The PTAB denied institution of a follow on petition filed five months after an initial petition by the same petitioner, even though the two petitions were directed to different claims.[1] The Board found no persuasive...
by Matthew Johnson | Apr 29, 2020 | Trial Institution
By Levent Herguner and Matt Johnson – The PTAB recently issued two simultaneous decisions in which it granted one IPR petition, but denied another. Both petitions were directed to Patent Owner Tela Innovations, Inc.’s U.S. Patent No. 7,943,966 (“the ’966...
by David Cochran | Feb 19, 2020 | 325(d) issues, Trial Institution
By Dave Cochran – 35 U.S.C. § 325(d) gives the PTAB discretion to deny a petition for inter partes review when the same or substantially the same prior art or arguments were previously before the Office – including during original examination, reexamination, or...
by David Maiorana | Feb 3, 2020 | Trial Institution
By Jasper Tran, Matthew Chung, Dave Maiorana, and Matt Johnson – On September 12, 2018, the PTAB in NHK Spring Co. v. Intri-Plex Techs., Inc. exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an IPR, despite the petition’s timely filing,...
by Tim Heverin | Dec 2, 2019 | CBMs, Patent Eligible Subject Matter, Trial Institution
By Morgan Restaino and Tim Heverin Following guidance from the Federal Circuit, the PTAB has vacated a previous Board decision granting Covered Business Method review in Apple, Inc. v. Universal Secure Registry LLC (P.T.A.B. Dec. 3, 2018). The PTAB’s decision to...
by David Maiorana | Nov 7, 2019 | Real Party in Interest, Trial Institution
By Robby Breetz and Dave Maiorana To institute an inter partes review (IPR), the petition requesting the proceeding must be filed within one year of the petitioner or real party in interest (RPI) receiving a complaint alleging patent infringement. 35 U.S.C. §...
