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.
PTAB Considers Efficiency When Deciding Motions to Submit Supplemental Information
By: Sean Benevento, Mike Lavine, and Matt Johnson – The PTAB considered a motion to supplement the record with additional information and elaborated on the standard for reviewing such a motion.
Avoiding Estoppel Is Not Good Cause To Withdraw Grounds After Institution
By: Sue Gerber and Matt Johnson – The PTAB considered a petitioner’s request to withdraw certain claims from consideration during Covered Business Method Review in order to avoid the effects of Section 315 estoppel following the Supreme Court’s SAS Institute decision.
Additional Discovery: Must Be More Than Mere Possibility
By: Tim Heverin – The PTAB elaborates on the first Garmin factor in considering a motion for additional discovery seeking documents relevant to inventorship.