Revised Standard Operating Procedure 2 and the New Path to PTAB Precedent
By Doug Pearson Prior to the USPTO’s issuance of revised Standard Operating Procedure (SOP) 2 on September 20, 2018 (available here), designation of Board decisions as Precedential or Informative required, among other things, nomination of a decision to the Chief...
USPTO’s Revised SOP Sheds Light on Selection of PTAB Panels
By Josh Nightingale and Matt Johnson The USPTO has revised its standard operating procedure (SOP) governing the assignment of judges to panels in Patent Trial and Appeal Board (PTAB) cases. The SOP, available here, provides guidance to Board administrative personnel...
Post-Priority Document Usable As Evidence of POSITA Motivation
By: Jennifer J. Chheda, Ph.D and John D. Kinton The Federal Circuit recently affirmed the Patent Trial and Appeal Board’s (“PTAB”) final written decisions finding the claims of Yeda Research and Development Co., Ltd.’s (“Yeda”) U.S. Patent Nos. 8,232,250, 8,399,413,...
Observations: Five Months After Supreme Court SAS Institute
By David Anderson and Joe Sauer As an update to the May 15, 2018 post, available here, some post-SAS trends appear to be taking shape. For the five-month period from May 2018 through September 2018, the PTAB issued 538 institution decisions. Of these, the PTAB...
Misbehavior In IPR Can Form Basis For Inequitable Conduct
By Tim Heverin Finjan, Inc. v. Cisco Systems, Inc., Case No. 17-cv-00072-BLF (N.D. Cal. Sept. 13, 2018), reminds us that representations to the PTAB can have consequences in district court litigation, even outside the estoppel context. In the patent infringement...