Discretionary Denial Despite Stipulation
By Hannah Mehrle and Matt Johnson - The Board exercised discretion under § 314 to deny inter partes review in view of co-pending district court litigation. In the Institution Decision, the Board evaluated the Fintiv factors in light of the USPTO Director’s June 2022...
Erroneous PGR Service Deemed Excusable by Split Panel
By Carl Kukkonen - In DynaEnergetics Europe GmbH et al v. QinetiQ Limited (PGR2023-00003), the petitioner filed its petition on the last possible day in the 9-month statutory period to timely file a petition for post-grant review (PGR). The certificate of service for...
Federal Circuit Clarifies Important IPR Estoppel Issues
By Josh Nightingale - Under 35 U.S.C. § 315(e)(2), a patent challenger in an inter partes review (IPR) that reaches a final written decision is estopped from arguing in a district court or the ITC that the challenged patent is invalid based on grounds that were...
Director Determines Petitioner Not Expected to Anticipate § 325(d) Argument
By David Linden, Dave Maiorana, and Marc Blackman - Director Vidal recently vacated a decision denying institution of an inter partes review (“IPR”) to allow Google, the Petitioner, to brief whether discretionary denial was warranted under Section 325(d) in view of a...
Tactical Decision Leads to Supplemental Information Request Denial
By Jesse Wynn and Lisa Furby - Parties before the PTAB should be careful to submit supplemental materials as soon as practicable. In Extractiontek Sales v. Gene Pools Tech., the PTAB denied a Patent Owner’s motion to submit a deposition transcript from a parallel...