IPR Proceedings: Extrinsic or Intrinsic Evidence for Claim Construction?
By: Joshua Nightingale and John Evans – Most district courts consider IPR proceedings to be intrinsic evidence, and this view finds support in Federal Circuit law as well as similar prior treatment of reexamination proceedings.
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...