PTAB Denies Request to Submit Supplemental Information on Skill Level of POSITA
By: Geoffrey Gavin – The PTAB denied a request for authorization to file a motion to submit supplemental information, despite acknowledging that the request satisfied both requirements of 37 CFR § 42.123(a), explaining that supplemental information is note intended to provide a wait-and-see opportunity to bolster one’s position.
PTAB Revokes Filing Privileges For Repeated Rules Violations
By Matt Johnson In September 2017, Saint Regis Mohawk Tribe moved to dismiss six instituted trials on petitions filed by Mylan Pharmaceuticals Inc. Those petitions challenged six patents that, at the time the petitions were filed, belonged to Allergan, Inc. The...
PTAB Denies PGR Petition Due To Related Application
By Dave Maiorana By now, most PTAB practitioners are familiar with 35 U.S.C. § 325(d), which gives the Board the authority to deny institution of a post-grant proceeding because the same or substantially the same prior art or arguments were previously presented to the...
Can Evidence of Noninstitution of an IPR be Introduced in District Court? Yes and No
By Doug Pearson With institution rates of IPR petitions continuing to slide, and with district courts determining (depending on narrow or broad readings of the Shaw case) how estoppel may or may not apply in district court to noninstituted IPR grounds, a natural...
PTAB Designates Two 35 U.S.C. §315(b) Cases Informative
By Rich Graham and Matt Johnson On January 10, 2018, the PTAB designated two decisions weighing on 35 U.S.C. § 315(b) as informative: Luv N’ Care, Ltd. v. McGinley, IPR2017-01216, Paper 13 (P.T.A.B. Sept. 18, 2017) (AIA § 315(b), insufficient funds at filing) Amneal...