The Federal Circuit Provides Another Data Point On the Interplay Between the PTAB and the Courts
By Dave Maiorana Since enactment of the AIA and the start of the new post-grant review proceedings at the USPTO, practitioners have speculated on the interaction between the PTAB and the courts. Yes, AIA post-grant proceedings were expressly intended to be lower-cost...
Failure to Make IPR Declarant Available for Deposition May Result in Exclusion
By Dave Maiorana Although this seems pretty obvious, failure to make an IPR declarant available for deposition likely will cause the Board to exclude the declarant’s testimony from the trial, absent agreement of the parties or special circumstances. In 1964 Ears,...
Patent Claims Must Be “Clear” At The PTAB: The Nautilus “Reasonable Certainty” Standard For Claim Definiteness Not Applied In AIA Post Grant Proceedings
By John Marlott The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the applicant regards as his...
Estopped or Not? District Court Says No Estoppel for Grounds Not Presented in an IPR Petition
By Doug Pearson Among the thorny questions for an IPR petitioner is how estoppel may affect invalidity positions asserted by the petitioner/litigant in a parallel district court proceeding, given the grounds of unpatentability asserted by the petitioner in an IPR...
Federal Circuit Establishes Legal Standard for Demonstrating Standing in an Appeal from a Final Written Decision in Inter Partes Review
By Rich Graham and Dave Cochran On January 9, 2017, the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) issued a decision in Phigenix, Inc. v. ImmunoGen, Inc., No. 2016-1544 (Fed. Cir. Jan. 9, 2017) establishing the legal standard for...