Petitioner’s Reply May Expand Presented Arguments and Address New Claim Constructions
By: David Anderson and Dave Cochran – The Federal Circuit considered whether the Board erred by rejecting petitioner’s arguments as improperly raised in reply, where petitioner’s arguments responded to Patent Owner’s newly introduced claim construction positions raised after institution in Patent Owner’s response.
Voluntary Dismissal Without Prejudice Does Not Reset One-Year Time Bar
By: Alex K. Chung Ph.D. and Matt Johnson – The Federal Circuit en banc considered whether the PTAB erred in interpreting § 315(b) such that a complaint served in a civil action, if subsequently dismissed voluntarily without prejudice, does not trigger the bar, essentially resetting the clock.
Petition For Writ Of Mandamus Not An End Run Around Cuozzo
By: Jennifer J. Chheda, Ph.D and John D. Kinton – The Federal Circuit considered a petition for writ of mandamus, based on APA grounds, seeking review of a PTAB decision not to institute.
A Truism that Once Again Bears Repeating: Don’t Wait Until the Last Minute
By: Emily Tait – Avoid going “down to the wire” on important case activities especially when there is a hard deadline in place and a significant adverse consequence.
PTAB Grants Rare Motion for Additional Discovery
By: Mital B. Patel and Gasper J. LaRosa – The PTAB considers a patent owner’s motion for additional discovery to compel depositions related to questions regarding the real parties in interest.