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Disclaimer Before Institution May Not Thwart PGRs

Disclaimer Before Institution May Not Thwart PGRs

By Jianle Wang,* Stephanie Mishaga, Matt Johnson - In Microsurgical Tech., Inc. v. Regents of the Univ. of Colorado, No. PGR2021-00026, Paper 12 (P.T.A.B. June 16, 2021), the Patent Trial and Appeal Board (“PTAB”) held that disclaimed claims should be considered for...

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NEWS: USPTO Issues First Director Review Decisions

NEWS: USPTO Issues First Director Review Decisions

By Matt Johnson - On July 6th and 7th, the USPTO made good on its promise to not wait for a confirmed director to begin Arthrex Director reviews, issuing its first denials of review requests.  The full press release is below:   USPTO issues first Director review...

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District Court Highlights Prior PTAB Invalidation

District Court Highlights Prior PTAB Invalidation

By Zach Sharb and Josh Nightingale - On May 26, 2021, the United States District Court for the Western District of Washington denied both defendant Valve Corporation’s (“Valve”) motion for judgment as a matter of law or a new trial, and plaintiff Ironburg Inventions...

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Fed. Cir.: Don’t Expect PTAB to Do Your Work For You

Fed. Cir.: Don’t Expect PTAB to Do Your Work For You

By Albert Liou - The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with particularity.  In the decision,...

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A Cautionary Tale: Paying IPR Filing Fees Via Wire Transfer

A Cautionary Tale: Paying IPR Filing Fees Via Wire Transfer

By Alison Ibendahl and Joseph Beauchamp - A June 25, 2021 decision by the PTAB has clarified that when paying the filing fee via wire transfer, the inter partes review (“IPR”) petition filing date is based upon when the funds are made available to the USPTO.  Toshiba...

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