PTAB Bar Association Law Journal – Discretionary Denials of IPR 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, due to...
IPR Petitioner Seeks Arthrex Remand Of PTAB Decision Denying Institution
By John Marlott - In view of Arthrex, can an unsuccessful petitioner get a do-over of a PTAB decision denying institution of an IPR? The USPTO says no, and the Federal Circuit has been asked to consider the question in United Fire Protection v. Engineered Corrosion...
Collateral Estoppel Applied by District Court Following IPR on Similar Patents
By Phillip Shelton and Carl Kukkonen - In Think Prod., Inc. v. ACCO Brands Corp., No. 18-CV-07506, 2019 WL 6609427, at *1 (N.D. Ill. Dec. 5, 2019), the District Court addressed whether the plaintiff patent ower was collaterally estopped from arguing validity in view...
Control of IPR Petition Remains Primary Factor in RPI Determination
By Robby Breetz and Matt Johnson Determining the Real Party-in-Interest (“RPI”) in an IPR can have critical implications for estoppel. A patent owner can prevent institution of an IPR by showing that an RPI has previously “filed a civil action challenging the...
A Compelling Decision – Board Addresses Scope Of Work Product Protection
By Marlee Hartenstein and Matt Johnson - In a series of IPR proceedings between Petitioner Adobe Inc. and Patent Owner RAH Color Technologies LLC, the Patent Trial and Appeal Board declined to extend attorney work product protection to deposition questions seeking the...