PTAB Makes Precedential Its Multi-Factor Approach To Assessing Follow-On Petitions
By John Marlott Serial IPR or CBM petitions challenging the same patent claims have been a recurring issue for the PTAB. On October 18, 2017, the PTAB designated as precedential a portion of a decision by an expanded panel that addressed this issue in General Plastic...
Expanded Panel Ratifies Post-Petition Disclaimer As Legitimate CBM Eligibility Strategy
By Matt Johnson An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction. In deciding petitioner's Institution Decision Rehearing Request in Facebook, Inc. v. Skky, LLC, Chief...
Federal Circuit Overturns PTAB Fact-Finding Regarding Conception of Invention
By Jaime Choi and Dave Cochran In IPR2014-01198, the PTAB found that the patent owner failed to prove that the patented invention was conceived prior to the date of the prior art, and thus concluded that the patent was unpatentable. The Federal Circuit disagreed,...
Petitioners Bear Burden Of Proving Claims Amended During IPR Unpatentable . . . For Now
By Greg Castanias, Jaclyn Stahl, John Marlott, and Dave Cochran In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears...
PTAB Disqualifies Reference for Failure to Show Public Accessibility
By Albert Liou and Joe Beauchamp The PTAB’s recent final written decision denying a finding of unpatentability in ABS Global, Inc. v. Inguran, LLC, Case IPR2016-00927, Paper 33 (PTAB Oct. 2, 2017) highlights the importance of obtaining affidavit evidence to prove...