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...
BREAKING: Click-to-Call and One-Year Time Bar – Petition for Certiorari Incoming
By Doug Pearson As reported in a prior post, the Federal Circuit in Click-To-Call Tech. v. Ingenio, Inc., 2015-1242 (Fed. Cir. Aug. 16, 2018) (en banc) found in a divided 10-2 en banc decision that a voluntary dismissal without prejudice of a district court litigation...