PTAB Must Provide Notice Of Sua Sponte Rejections Of Substitute Claims
By Pablo Hendler - In its April 9, 2020 decision in Nike Inc. v. Adidas AG, No. 19-1262, the Court of Appeals for the Federal Circuit made clear that the Board cannot reject substitute claims based on a sua sponte invalidity contention without first providing notice...
BREAKING: Supreme Court Says PTAB Time Bar Unappealable
On Monday, the Supreme Court ruled that 35 U.S.C. § 314(d)'s statement that the "determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable" means that PTAB decisions regarding the timeliness of IPR...
MPF – Corresponding Structure = Trouble For Petitioners
By John Marlott - Means-plus-function claim limitations can present troublesome § 112 issues for IPR petitioners, and a recent PTAB decision further demonstrates how § 112 problems can derail an IPR petition. Samsung Electronics America, Inc. v. Uniloc 2017 LLC,...
INFORMATIVE: Conference Paper Public Accessibility – Insufficient Proof
By Alex Li and Matt Johnson - As was previously noted here, the PTAB recently designated one decision as precedential and four as informative concerning the necessary showing for proving up a reference as printed publication prior art. Here is an in depth review of...
Court Allows Accused Infringer’s Have-Cake, Eat-Cake Patent Invalidity Strategy
By John Marlott - While acknowledging an “apparent loophole” in the America Invents Act, a district court has permitted an accused-infringer-DJ-plaintiff to pursue counterclaims for patent invalidity—with no bar on later seeking an IPR at the PTAB. Epic Games, Inc. v....