

When Is a Published Patent Application Prior Art in an IPR?
By Adam J. Cook and Michael Oblon - On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...

Two Many IPRs: Different References Insufficient for Parallel IPRs
By Pranita Dhungana and Matt Johnson - The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co., Ltd....

PTAB AIA FY2024 Roundup: Key Insights and Statistics
By Carl Kukkonen - The U.S. Patent and Trademark Office (USPTO) recently released its Fiscal Year 2024 roundup for the Patent Trial and Appeal Board (PTAB) America Invents Act (AIA) proceedings. This comprehensive report provides valuable insights into the trends and...

Prior Art Asserted in Second Petition Should Have Been Asserted in the First
By Adriane Elinski and Emily Tait - The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same patent...

Thickness Arguments Cross the Line for Federal Circuit
By Sue Gerber, Adriane Elinski, and Matt Johnson - When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are...