PGR Eligibility for Patents Issuing from Pre-AIA Examined Applications
US Endotronics, LLC. v. Gold Standard Instruments, LLC., PGR2015-00019 Patent applications filed on or after March 16, 2013, that claim priority to an application filed before March 16, 2013 (“transition applications”), are examined under pre-AIA first-to-invent...
Strategic Use of PTAB’s 325(d) Discretion
The AIA provides PTAB panels a significant amount of discretion in managing their docket, from joinder provisions to the ability to stay or consolidate related, concurrent proceedings in other areas of the Office. 35 U.S.C. § 325(d) provides the Board discretion in...
Supreme Court Grants Cert in Challenge to PTAB Procedure
Cuozzo Speed Tech. v. Lee (Supreme Court 2015). On January 15th, the Supreme Court granted certiorari in Cuozzo Speed Tech. v. Lee, agreeing to hear a challenge to the Federal Circuit's February 2015 decision upholding the PTAB's invalidation of certain claims of...
Standard for Indefiniteness in PGR Proceedings – Nautilus or Packard?
In PGR2015-00018, Petitioner Telebrands Corp. filed a petition for post-grant review of claims 1-14 of U.S. Patent No. 9,051,066 (filed September 2014, issued June 2015). In the attached decision, described below, the Board instituted post-grant review, finding that...
PTAB Designates Two Decisions As Precedential
On January 12, 2016, the PTAB identified two of its recent decisions as being precedential. These two decisions are in line with prior panel decisions and solidify the Board's policy with regard to aspects of the one year IPR bar and the application of estoppels at...