PTAB Orders Petitioner’s Expert to Produce Discovery
By Marc S. Blackman The PTAB recently granted a Patent Owner’s motion to take additional discovery of Petitioner’s expert. In particular, the PTAB ordered Petitioner’s expert to produce documents that identify materials he reviewed in preparing his declaration. ...
Mere Similarity Between References is Insufficient Rationale for Obviousness
By Grant Hebrank,* Josh Nightingale, and Matt Johnson On May 8, 2019, the Patent Trial and Appeal Board denied institution of inter partes review in William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, holding that the mere fact that prior art...
States Cannot Claim Sovereign Immunity to Shield Their Patents From IPR
By Bobby Karl* and Dave Maiorana In a precedential decision, issued June 14, 2019, the Federal Circuit affirmed the PTAB’s ruling against the University of Minnesota, declining to dismiss petitions for inter partes review (“IPR”). The court rejected the university’s...
Post-Filing, Pre-Institution Merger Time-Bars Inter Partes Review
By Jihong Lou and Matt Johnson In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section 315(b). In...
Supreme Court To Decide Appealability of PTAB’s Time-Bar Determinations
Gregory A Castanias and Jihong Lou On June 24, in Dex Media, Inc. v. Click-To-Call Technologies, LP, No. 18-916 (U.S.), the Supreme Court agreed to review the question whether 35 U.S.C. § 314(d) permits appeal of the PTAB’s decision to institute an inter partes review...