PRECEDENTIAL – Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art
By Connor Scholes, Owen Carpenter, Bill Devitt, and Dave Maiorana - In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be...
Reverse Engineered Search Insufficient For IPR/PGR Estoppel
By Tom Ritchie - In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its post-grant review (PGR)...
“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial
By Daniel Sloan and Josh Nightingale - The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023). There, the PTAB held that (1) a Sotera...
Undated Screenshot Insufficient to Prove Public Accessibility of GitHub Repository
By Justice Hubbard, Robby Breetz, and Josh Nightingale - In AO Kaspersky Lab v. Open Text Inc., the PTAB denied inter partes review after determining that a screenshot of a GitHub repository was insufficient to establish that a whitepaper posted to that repository...
Petitioner Prevails In Institution Decision Do-Over After Director Steps In
By Connor Scholes, Ashvi Patel, and Josh Nightingale - On November 6, 2023, the PTAB issued an decision instituting inter partes review of U.S. Patent No. 10,681,009 B2 (“the ’009 patent”) in Keysight Technologies, Inc. v. Centripetal Networks, Inc., IPR2022-01421,...