Erroneous PGR Service Deemed Excusable by Split Panel
By Carl Kukkonen - In DynaEnergetics Europe GmbH et al v. QinetiQ Limited (PGR2023-00003), the petitioner filed its petition on the last possible day in the 9-month statutory period to timely file a petition for post-grant review (PGR). The certificate of service for...
Federal Circuit Clarifies Important IPR Estoppel Issues
By Josh Nightingale - Under 35 U.S.C. § 315(e)(2), a patent challenger in an inter partes review (IPR) that reaches a final written decision is estopped from arguing in a district court or the ITC that the challenged patent is invalid based on grounds that were...
Director Determines Petitioner Not Expected to Anticipate § 325(d) Argument
By David Linden, Dave Maiorana, and Marc Blackman - Director Vidal recently vacated a decision denying institution of an inter partes review (“IPR”) to allow Google, the Petitioner, to brief whether discretionary denial was warranted under Section 325(d) in view of a...
Tactical Decision Leads to Supplemental Information Request Denial
By Jesse Wynn and Lisa Furby - Parties before the PTAB should be careful to submit supplemental materials as soon as practicable. In Extractiontek Sales v. Gene Pools Tech., the PTAB denied a Patent Owner’s motion to submit a deposition transcript from a parallel...
HE HAD THE POWER – Hirshfeld Decisions Stand
By Alison Ibendahl and Joe Beauchamp - A panel of the Federal Circuit has again held that Commissioner Drew Hirshfeld had the requisite authority to act on requests for Director review of PTAB decisions during which the office of Director was vacant. Fall Line Pats.,...