Failure To Maintain Correspondence Address Could Be Detrimental To Your Health
By: Matt Johnson – The PTAB grants Patent Owner a good cause extension to file the Patent Owner Preliminary Response, but not without a strong dissent citing Patent Owner’s failure to update the correspondence address of record.
Is The PTAB Bound By A Previous Federal Circuit Claim Construction?
By: Dave Maiorana – The Federal Circuit affirms a PTAB determination that the PTAB is not bound by a previous Federal Circuit’s finding regarding claim construction and patentability, where the court’s finding was decided under ITC, not PTAB, standards.
Incorporation by Reference Users Beware
By: Alex Chung and Matt Johnson – The Federal Circuit rescues a patent from PTAB’s determination that an incorporation by reference clause in a patent failed to incorporate material necessary to provide adequate written description support, but a clear and unambiguous incorporation by reference clause would have prevented the issue altogether.
Challenges to Real Parties-in-Interest Continue to Terminate IPR Proceedings
By: Jasper L. Tran and S. Christian Platt – Failure to thoroughly identify a real party-in-interest can undermine an IPR proceeding. The PTAB continues to enforce the requirement that the real parties-in-interest be thoroughly disclosed, this time terminating three IPRs where a petitioner failed to refute challenges to its identified real parties-in-interest.
The Scope Of IPR Petitioner Estoppel For Non-Petitioned Grounds Remains Uncertain
By: Tom Ritchie and John Marlott – District courts continue to split on the scope of estoppel as to non-petitioned prior art grounds, and the Federal Circuit has not yet addressed this split . Given the uncertainty, petitioners and patent owners should consider their litigation strategies carefully while awaiting further development.