PTAB Proposes Burden of Persuasion Rules for AIA Amendments
By Phillip S. Beck and Christian Platt On October 21, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) provided a Notice of Proposed Rulemaking (“NPRM”) concerning their rules of practice in allocating burdens...
NHK § 314(a) Analysis Results in Denial
By Tom Ritchie and Matt Johnson The status of a parallel district court proceeding may provide a basis for the PTAB to deny institution of an IPR pursuant to § 314(a). NHK Spring Co. v. Intri-Plex Techs., Inc., IPR2018-00752, Paper 8 (PTAB Sep. 12, 2018)...
Speech Recognition Patent Invalidated on Multiple Grounds in CBM Review
By Emily Tait The Patent Trial and Appeal Board (“PTAB”) recently issued a Final Written Decision in favor of Comcast Cable Communications, LLC (“Comcast”) and against Promptu Systems Corporation (“Promptu”) in a covered business method (“CBM”) review of Promptu’s...
Trial Court Denies Amendment of Contentions To Add Reexam Claims Following Successful IPR
By Gasper LaRosa and Stephanie M. Brooker What happens when patent claims are found unpatentable in inter partes review (“IPR”) and new claims are subsequently added to that patent through ex parte reexamination? The District Court for the Northern District of...
IPR Goes Forward Despite Late Stage Parallel ITC Investigation
By: Yury Kalish and Vishal Khatri – Since their inception as part of the AIA, inter partes reviews (IPRs) have been a favorite tool in the arsenal of patent challengers. Their statutorily mandated 18-month schedule oftentimes allows the PTAB to resolve a question of...