PTAB Judges Discuss Recent Procedure Changes in Boardside Chat
By Albert Liou The Patent Trial and Appeal Board held a Boardside Chat on October 10, 2019, discussing the various recent changes made to PTAB procedures. The panel discussion featured Chief Judge Scott Boalick, Deputy Chief Judge Jackie Bonilla, Vice Chief Judge Tim...
Preemptive Declaratory Judgment Invalidity Counterclaims Trigger Statutory Bar
By Sue Gerber and Matt Johnson Last year, this blog discussed various strategic considerations for litigants seeking declarations of invalidity in district court actions to avoid being precluded from also seeking inter partes or other post-grant review before the...
New Theories Not Permitted In IPR Reply Brief
By Kenny Luchesi In Henny Penny Corp. v. Frymaster L.L.C., No. IPR2016-01435, (P.T.A.B. Mar. 16, 2017), the petitioner (HPC) challenged certain claims of U.S. Patent No. 8,497,691, owned by HPC’s competitor, Frymaster. The ’691 patent relates to deep fryers, and is...
Opening a Can of Worms for Design Patent Obviousness?
By Kerry Barrett and John Evans Design patent obviousness requires a heavy threshold burden of proof. Challengers have to find a “primary reference,” i.e., prior art that has “basically the same” design characteristics as the claimed design. Below is an example of...
District Court Stays After SAS – Simplified Or Not?
By John Marlott After SAS, does institution of an IPR make a district court more or less likely to stay a parallel litigation? Maybe, maybe not. In its April 2018 decision in SAS Institute v. Iancu, the U.S. Supreme Court ruled that the PTAB cannot take a selective,...