Third Party IPRs Sway District Court’s Prevailing Party and Costs Rulings
By Connor Scholes, Daniel Sloan, and John Marlott - Third-party IPRs can moot previously favorable decisions and leave a previously successful party to bear its own costs. On October 16, 2024, Judge Rodney Gilstrap denied the plaintiff’s Motion to be Confirmed as the...
New Declarations with a Sur-reply Require Extraordinary Circumstances
By Adam Cook and Matt Johnson - In a 2-1 decision, the Patent Trial and Appeal Board (“PTAB”) denied a patent owner’s motion to file two new declarations in connection with its sur-reply, holding that the patent owner failed to prove the extraordinary circumstances...
PTAB Reiterates Strict Evidentiary Standard for Printed Publications
By Nicholas D'Andrea and Matt Johnson - The PTAB denied institution of inter partes review (IPR) for a patent directed to geothermal technology. Fervo Energy Co. v. Ormat Techs. Inc., IPR2014-00665, Paper 18 (PTAB Sept. 18, 2024). The claimed invention related to...
PREVAIL Act Passes Committee
By Levent Herguner, Derek Walker, and Matt Johnson - The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21, 2024. In...
“First Available” Date Alone Is Insufficient Evidence of Disclosure
By Adam Cook and Matt Johnson - The Patent Trial and Appeal Board (“PTAB”) denied institution in an inter partes review (“IPR”), finding that an online store’s assertion regarding when a product was “first available” is by itself insufficient evidence of enabling...