PTAB Bar Association Hosts Inaugural Thought Leader Summit
By Levent Herguner, Alex Li, and Joe Sauer On Tuesday, November 13th, the PTAB Bar Association held its inaugural Thought Leader Summit. The Summit featured two sessions on recent developments in the patent litigation field, as well as a keynote address from Acting...
PTAB Deputy Chief Judge Bonilla Provides Claim Amendment Pilot Insights
By Matt Johnson On November 27th, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla presented a webinar on the PTAB’s proposed Motion to Amend pilot program. In October 2018, the Patent Office published a request for comments on motion to amend...
Assignor Estoppel Does Not Apply to IPRs
By Jocelyn Yu Ph.D. and Carl Kukkonen Assignor estoppel is a long-established, common-law doctrine of equity, which prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. The doctrine also applies to parties in...
ITC Blog: ITC Provides a Way to Work Around IPR Estoppel
By: David Maiorana In In re Certain Magnetic Tape Cartridges and Components Thereof, 337-TA-1058 (ITC October 2, 2018, Order), Administrative Law Judge Cheney ruled that even if a respondent is estopped from raising certain invalidity challenges because it failed to...
Intervening Court Decisions May Prevent Denial of Review Under § 325(d)
By Kait Crowder and Dave Maiorana Under 35 U.S.C. § 325(d), the PTAB has discretion regarding whether to institute a covered business method review if the arguments presented in the petition are the same, or substantially the same, as those previously considered by...