USPTO Issues Notice of Proposed Rulemaking On Discretionary Denial, Serial and Parallel Petitions, and Settlement
By Matthew Johnson, Carl Kukkonen, Evan C. Jones, and Daniel Sloan - On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues. The Notice addresses stakeholder...
Forced Cooperation Between Rivals Does Not Create a “Significant Relationship”
By Sarah Geers and Daniel Sloan - Director Vidal recently vacated three discretionary denials of institution after finding that the three petitioners did not have a “significant relationship” with a prior petitioner. American Honda Motor Co., Inc. v. Neo Wireless...
PTAB Announces Rules Formalizing Director Review
By: Lisa Furby, Marlee Hartenstein, Stephanie M. Mishaga and Robby Breetz - In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review (discussed here). The PTO has now issued a Notice of Proposed...
Common Ownership Exception Leads to Petition Denial
By Jack Graves and Matt Johnson - The PTAB recently denied Trend Micro, Inc.’s (Petitioner) inter partes review petition against Open Text, Inc. and Webroot, Inc. (Patent Owners) challenging all claims of U.S. Pat. No. 8,201,243. Trend Micro, Inc. v. Open Text, Inc.,...
“Known” Claim Elements Alone Insufficient for Motivation to Combine
By Phil Shelton, Sue Gerber, and Matt Johnson - In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB”) decision in holding that certain claims of the Virtek patent (U.S. Patent No. 10,052,734) were unpatentable as obvious. ...