Patent Owner Sanctioned For Ex Parte Communications
By Dave Maiorana Under 37 C.F.R. § 42.5(d), communications with a Board member regarding a specific proceeding are not permitted “unless both parties have an opportunity to be involved in the communication.” This prohibition, however, does not extend to “referring to...
Role Of Company Board Members May Impact RPI Analysis
By Jennifer Chheda Ph.D. and John Kinton The Patent Trial and Appeal Board (“PTAB”) recently denied the request of petitioner Fasteners for Retail, Inc. (“FFR” or “petitioner”) for rehearing in connection with decisions denying the institution of inter partes review...
Patent Owner Gets Break On Improper MTA/Reply
By Levent Herguner and Matt Johnson - On November 30, 2018, the PTAB filed an opinion addressing two procedural issues in Aver Information Inc. v. Pathway Innovations and Technologies, Inc., Case IPR2017-02108, including failure to meet spacing requirements and...
Combatting Lack of Assignor Estoppel in IPRs (Maybe)
By Marlee Hartenstein and Matt Johnson - Assignor estoppel is an equitable doctrine that prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. As reported in a prior post, the Federal Circuit recently stated...
Do Only Certain IPR Petitioners Have Standing To Appeal Adverse PTAB Decisions?
By John Marlott - Estimates are that roughly 80% of IPRs involve a challenge to a patent being asserted against the petitioner in a district court litigation. Typically, in those IPRs, if the litigation-defendant-petitioner loses at the PTAB, there is no...