Expert Testimony Supporting POPR Can Be An Effective Strategy
By Sue Gerber - It is relatively uncommon for parties to submit expert declarations in the preliminary-response phase of an IPR proceeding, but recently the Patent Owner in Imperative Care, Inc. v. Inari Medical, Inc. effectively used that strategy to defeat...
Federal Circuit Reverses District Court’s Application Of Collateral Estoppel
By Zac Hardy and Matt Johnson - Kroy IP Holdings, LLC sued Groupon, Inc., alleging infringement of 13 claims of U.S. Patent No. 6,061,660 (“’660 patent’), which relates to incentive programs over computer networks. Those claims were invalidated via successful IPR...
Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority
By Ernie Oleksy and Matt Johnson - The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...
PTAB Pendulum Swings in Favor of Discretionary Denial
By Joshua Nightingale and Daniel Sloan - Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings. On March 24, 2025, following the February 28, 2025...
PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues
By Jennifer Chheda, Yi Dulkeith, and Tova Werblowsky - A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary...