PTAB Requires Identification of Structure for Function for Means-Plus-Function Terms
By Vishal Khatri and Dave Cochran In a decision dated August 17, 2017, the PTAB denied institution of Kingston Technology Company, Inc.’s petition requesting inter partes review of claims 1-3, 6-8, 11-15, 23-28, and 36-39 of U.S. Patent No. 6,088,802 (“the ‘802...
Expanded PTO Panels and Improper Joinder: The Federal Circuit Fires a Warning Shot
By Joseph M. Sauer The Federal Circuit’s decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., (Fed. Cir. No. 16-2321), expresses a growing discomfort with the Patent Office’s practice of joinder and expanded panels. Procedural History The procedural...
Handling Improper Coaching of Witnesses During PTAB Deposition Proceedings
By Joe Beauchamp Many attorneys have encountered an opposing party’s witness that provides very concise, supportive responses to the questions of the witness’s own attorney after a recess in a deposition. Often, these helpful responses occur during re-direct of the...
PTAB Denies Discovery on Chipsets Purportedly Related to Proper Interpretation of Reference
By Geoffrey Gavin In Semiconductor Components Industries, LLC v. Power Integrations, IPR2016-00809, Paper 65 (PTAB Aug. 4, 2017), the PTAB denied the patent owner’s request for authorization to serve requests for production seeking documents and things related to...
District Court Finds Estoppel for Non-Petitioned Grounds but not for Dicta
By Doug Pearson, Ph.D. Since the Federal Circuit’s decision in Shaw Indus. Grp., Inc. Automated Creel Sys., Inc., 817 F.3d 1293 (Fed. Cir. 2016), district courts have been finding no estoppel in court proceedings for invalidity positions that were presented, but not...