Failure to Challenge Patent Owner’s Assertions Proves Detrimental
By Evan Tassis and Matt Johnson - The PTAB recently denied institution of inter partes review of a patent directed to determining the pitch of roofs after finding that Petitioner failed to directly challenge the sufficiency of Patent Owner’s priority assertions in...
Common Inventorship And Technology Insufficient For 325(d) Denial
By Matt Johnson and Jack Graves— The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had previously...
PTAB Updates Procedures For Interim Director Review
By Sue Gerber and Matt Johnson - Effective July 24, 2023, the Patent Office updated its procedures for Interim Director Review (“DR”) of PTAB decisions. The updated procedures include the following key provisions: Expanding the process to permit parties to request DR...
Petitioner Faulted For Not Preemptively Addressing Fintiv
By RJ Shea and Matt Johnson - On July 17, 2023, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review petition based on the stature of a related U.S. District Court of Delaware...
Legislation: Will the Post-Grant Procedures Established by the AIA PREVAIL?
By Nick Bagnolo and Kenny Luchesi - The Senate recently introduced a bill directed to substantially narrowing the scope of post grant proceedings, including Inter Partes Reviews (“IPRs”), before the Patent Trial and Appeal Board (“PTAB”). First introduced by a...