PTAB Grants Discovery of ITC Documents
By Anthony Bautista and Matt Johnson - In Apple Inc. v. Masimo Corp., the PTAB granted Masimo, the owner of patent 10,687,745 (“the ’745 patent”), their request for production directed to “specific documents identified in regard to [a prior] ITC Investigation,...
Prior Conception Defeats Otherwise Sufficient Derivation Showing
By Sarah Geers and Ashvi Patel - In its second-ever Final Written Decision in a derivation proceeding, the Patent Trial and Appeal Board ("PTAB") determined that a patent application for a biocidal composition and method of producing said biocidal composition did not...
New Case Theories Post-Institution; Better to Ask Permission
By Christian Roberts and Matt Johnson - Petitioners should be cautious of introducing a new theory in a Petitioner Reply before the PTAB. On February 7, 2023, the Patent Trial and Appeal Board (“PTAB”) entered a final written decision declining to find any claims...
Director Provides Insight On Interplay Between Written Description And Enablement
By Levent Herguner and Matt Johnson - USPTO Director Kathi Vidal recently vacated a PTAB decision denying institution of a post-grant review and remanded the case for further proceedings. The petitioner challenged claims 1–27 of the ’274 patent under 35 U.S.C. §...
How Long Is Too Long To Wait To Settle?
By Sue Gerber and Matt Johnson - An IPR “shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” 35 U.S.C....