Patent Owner Unable to Change Inventorship During Remand
By Hannah Mehrle and Matt Johnson - At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner’s primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date of the...
Parallel Petitions Denied
By Simon Maxwell* and Matt Johnson - On March 15, 2022, Facet Technologies, LLC (Plaintiff/Patent Owner) filed an infringement suit against LifeScan, Inc. (Defendant/Petitioner) in U.S. District Court for infringement of U.S. Patent No. 8,840,635 (the ’635 patent)....
Limitations Absent from a Notice of Allowability May be Material
By Daniel Sloan and Matt Johnson - On August 24, 2023, USPTO Director Kathi Vidal vacated a PTAB decision denying institution of inter partes review in Keysight Technologies, Inc. v. Centripetal Networks, Inc. and remanded the case for further proceedings....
PTAB Publishes Revised Oral Hearing Guide
By RJ Shea and Matt Johnson - The Patent Trial and Appeal Board (“PTAB”) recently published a revised PTAB Oral Hearing Guide (August 2023) updating prior guidance on hearings. The revised Guide includes changes to: 1. Remote participation in PTAB Proceedings; 2....
Defective Service of Complaint Fails to Trigger Time Bar
By Tova Werblowsky* and Matt Johnson - Institution of an IPR is automatically barred if the “petition requesting the proceeding is filed more than 1 year after the date on which the petitioner…is served with the complaint alleging infringement of the patent.” 35...