File It: Motion for Remand in View of SAS Institute
By: Dan Kazhdan and Matt Johnson – On May 25, the Federal Circuit provided some clarity on pending appeals of partial final written decisions in view of a motion for remand in view of SAS Institute.
PTAB Designates Western Digital as Informative of Motions to Amend
By: Rich Graham and Matt Johnson – The PTAB designates Western Digital decision as informative guidance on motions to amend following the Federal Circuit’s Aqua Products decision.
Federal Circuit: PTAB Affirmance Estops All Pending Actions Involving Patent
By: Albert Liou – On an appeal from a district court jury decision finding a patent valid, the Federal Circuit considers the preclusive effect of a Federal Circuit affirmance of a PTAB finding of unpatentability with respect to the same patent in an IPR brought by a third party to the district court litigation.
No Genuine Issue of Fact Where Petitioner’s Claim Construction Is Wrong
By: Sanjiv Laud and Dave Cochran – The PTAB considers a rehearing request arguing that the Board’s denial of institution based on petitioner’s reliance on incorrect claim construction ignored rule 42.108(c)’s requirement that conflicting testimony be viewed in the light most favorable to the petitioner for institution purposes.
Swearing Behind: Don’t Get Stuck in a Catch-22 of Corroboration
By: Emily Tait – The Federal Circuit considers a PTAB decision finding Patent Owner failed to sufficiently corroborate evidence of prior invention, where the evidence under consideration required support from an inventor declaration that was, itself, corroborated by the evidence under consideration.