Continuously Keeping Your IPR Ducks in a Row: Sanctions for Failing to Update the PTAB on Changes in Real Parties of Interest
By Jaime D. Choi Ph.D. IPR petitions are required to identify “all real parties in interest,” among other things because the final written decision of the PTAB prevents the petitioner, the real party in interest, or privy of the petitioner to “request or maintain a...
PTAB Says Copyright Notice Alone Doesn’t Make Out a Printed Publication
By Dave Cochran The PTAB denied institution of inter partes review in IPR2016-01083, Microsoft Corporation v. Corel Software, Inc., because the petitioner – Microsoft – failed to establish that a software reference manual that was part of its sole ground of...
Federal Circuit Reverses PTAB Decision For Failing To Adequately Explain Its Obviousness Findings
By Dave Maiorana The Federal Circuit In In re: NuVasive, Inc. vacated and remanded the Patent Trial and Appeal Board’s finding that NuVasive’s claims are unpatentable in IPR2013-00506. The court held that it was unable to review the PTAB’s obviousness findings...
En Banc Federal Circuit Hears Arguments Concerning Claim Amendments In Post-Grant Proceedings: In re: Aqua Products
By John Marlott As we reported earlier (link), the en banc Federal Circuit is currently considering two important questions involving the PTO’s rules for claim amendments and the PTAB’s handling of motions to amend during IPR proceedings, In re: Aqua Products, Inc.,...
When Relying upon Scientific Test Data in its Petition, the Petitioner Must Provide Sufficient Information to Permit the PTAB to Evaluate the Data and its Reliability
By Jennifer Chheda, Ph.D. and Cary Miller, Ph.D. On November 14, 2016, the PTAB issued a Final Written Decision upholding Paragon Bioteck, Inc.’s patent, U.S. Patent No. 8,859,623 B1 (the “’623 patent”), relating to a method of using an ophthalmic composition for...