PTAB Rejects Double-Dose of Prior Art
By Matt Modderman, Asvhi Patel, Geoffrey Gavin - In Sandoz Inc. v. Acerta Pharma B.V. (IPR2023-00478), a Patent Trial and Appeal Board (“PTAB”) panel denied IPR institution where the asserted prior art was cumulative of that considered during prosecution. This denial...
Error In Declaration Insufficient To Sink IPR
By Marc Blackman - In a precedential opinion, the Court of Appeals for the Federal Circuit vacated a final written decision in which the Patent Trial and Appeal Board (“PTAB”) found that Apple had failed to meet its burden of showing unpatentability due to an error in...
PTAB Applies General Plastic Factors to Serial Petitions Seeking Joinder
By David Linden and Dave Maiorana - In February 2023, T-Mobile USA, Inc. (“T-Mobile”) filed petitions requesting four inter partes reviews (“the T-Mobile IPRs”)—two of which challenged U.S. Patent No. 8,630,234 and two of which challenged U.S. Patent No. 10,880,721...
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...