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...
Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder
By Catharina Chin Eng and Matt Johnson Our prior post on the PTAB’s second update to the AIA Trial Practice Guide (TPG), published July 15, 2019, highlighted the additional guidance provided for petitions, patent owner preliminary responses and claim construction. ...
Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence
By Catharina Chin Eng and Matt Johnson On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The original...
Precedential PTAB Order Addresses Witness Examination
By Carl Kukkonen The PTAB panel in Focal Therapeutics, Inc. v. SenoRx, Inc., Case IPR2014-00116 (PTAB July 21, 2014) (Paper 19), provided certain clarifications with regard to the ability to confer with witnesses during examination. This clarification was in response...