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...
by Marc S. Blackman | May 28, 2020 | Time Limits, Trial Institution
By Marc Blackman – Applying the PTAB’s precedential NHK decision, the PTAB exercised its discretion to deny institution of three timely filed IPR petitions due to the advanced stage of a related district court action. Intel Corporation v. VLSI Technology LLC,...
by Matthew Johnson | May 22, 2020 | Trial Institution
By Lisa Furby and Matt Johnson – The Federal Circuit’s decision in ESIP Series 2 v. Puzhen Life USA, LLC, No. 19-1659, held that the “no appeal” provision found in 35 U.S.C. § 314(d) (“Section 314(d)”) bars judicial review of PTAB determinations regarding the...
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...
