PTAB Statistics Through Four Months of 2020
By Matt Johnson – The institution rate for post-grant challenges in current FY 2020 (Oct. 1, 2019 through January 31, 2020) stands at 56% compared to 63% in the previous fiscal year. While a relatively small sample size (204 instituted, 161 denied), this is a number...
PTAB Rules Certificate of Correction is Not Retroactive in IPR
By Kenny Luchesi - On remand from the Federal Circuit, the PTAB ruled that a patentee’s certificate of correction—issued after the Board invalidated the claims in a final written decision—could not be applied retroactively. After the IPR petition was filed, the...
Same or Similar Art Mutes IPR Petition on Medical Device Patent
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 a...
CAFC Holds PTAB May Not Cancel Claims For Indefiniteness In An IPR
By Sue Gerber and Matt Johnson - The Federal Circuit’s recent decision in Samsung Electronics America, Inc. v. Prisua Engineering Corp., --- F.3d ---, 2020 WL 543427, at *4 (Fed. Cir. Feb. 4. 2020), could not be more clear: “[W]e hold that the Board may not cancel...
PTAB Permits Extra Briefing to Evaluate Request for Rehearing
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 Antarctic AS,...