Successful Rehearing of WesternGeco LLC v. PGS Geophysical- What Went Right?
By Kamilah Alexander and Carl Kukkonen Conventional wisdom endorses the view that petitioning for a rehearing of a Patent Trial and Appeal Board (“Board”) final written decision is a waste of both attorney and client resources (i.e., time and money). Does...
Live Testimony Offered — Board Says “No, Thank You”
By Matt Johnson The Patent Trial and Appeal Board's Trial Practice Guide, 77 Fed. Reg. 48756, includes discussions of types of discovery that may come into play in post-grant trials, including the possibility of live testimony. The Guide states that "[d]iscovery is a...
Battle-Of-The-Stays – Chalk Up Another Victory to the Petitioners
By Matt Johnson The multiple flavors of review and prosecution at the Patent Office produce an environment where a patent family could be subject to inconsistent results. Conceivably, patents in a pre-AIA patent family could simultaneously be subject to regular...
Board Tackles Constitutional Law — Finds Eleventh Amendment Sovereign Immunity Applies to PTAB
By Joe Sauer The PTAB recently dismissed three IPR Petitions filed against the University of Florida Research Foundation on the basis of Eleventh Amendment sovereign immunity. See, Covidien LP v University of Florida Research Foundation Incorporated, IPR2016-01274;...
Objective Indicia of Non-obviousness Shine as Primary Consideration in PTAB Decision
By Matt Johnson While touted by the Federal circuit as “a powerful tool for courts faced with the difficult task of avoiding subconscious reliance on hindsight,” objective indicia of non-obviousness have, to date at the PTAB, been little more than a secondary...