Reexamination Stayed Pending IPR
By Sue Gerber and Matt Johnson Reexamination can be stayed pending IPR proceedings for good cause shown. The PTAB recently found good cause for a stay had been established when the reexamination proceedings and IPR proceedings had only a single claim in common, but...
PTAB Abused Discretion in Denying Request to File Motion for Additional Discovery
By Jen Bachorik and Matt Johnson In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying VirnetX’s...
Should § 101 Legislation Include An Extension Or Revamp Of The CBM Program?
By John Marlott Is the little-used CBM patent review program the key to passage of § 101 legislation? Congress is currently considering legislation to drastically alter the patent eligibility statute, 35 U.S.C. § 101. The unabashed intent of the proposed legislation...
Patent Owner in Standard-Essential Patent Pool Has Standing to Appeal
By Elizabeth Dengler,* Mike Lavine, Jihong Lou, Matthew Johnson Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding...
Design Patents at PTAB – Substantially the Same vs Basically the Same
By John Evans and Kerry Barrett The PTAB’s recent decision instituting post-grant review of a design patent in Man Wah Holdings Ltd. v. Raffel provides interesting perspectives on how design patent invalidity theories work. This decision highlights the subtle...