Andersen: A Window into Derivation Proceedings before the PTAB
By Albert Liou Recently, the PTAB issued its first ever final written decision in a post-AIA derivation proceeding in Andersen Corporation v. GED Integrated Solutions, Inc., Case DER2017-00007, Paper 57 (PTAB Mar. 20, 2019), finding that the Petitioner had not proved...
Seeing Multiple: Observations from Petitioner Filing Strategies Following SAS
By Kerry Barrett, David Anderson, and Joe Sauer In April 2018, the United States Supreme Court held that the PTAB must issue a final written decision addressing every patent claim challenged in an IPR petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). In...
PTAB Denies Entire IPR Petition as Voluminous and Excessive
By Levent Herguner and Matt Johnson In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny inter partes review of Perfect Company’s (“Patent Owner”) patent. Adaptics Ltd. v. Perfect Co., IPR2018-01596 (March 6, 2019). A panel of...
Precedential: Live Testimony Not Permitted Absent Prior Declaration
By Kenny Luchesi In a recent decision that the PTAB designated as precedential, the Board denied a patent owner’s request to provide live testimony from the inventor of the challenged patent at the oral hearing. In DePuy Synthes Products, Inc. v. MedIdeam LLC, Case...
Precedential Opinion Provides Factors For Deciding Whether To Allow Live Testimony
By Sue Gerber and Matt Johnson Generally, the PTAB does not allow live testimony at oral argument, but recently it designated one of its 2014 decisions as precedential to give guidance as to when the Board will allow live testimony at oral argument. K-40 Electronics,...