PRECEDENTIAL: Institution Denied Based On Insufficiently Supported Expert Declaration
By Carl Kukkonen - In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) the PTAB denied institution of an Inter Partes Review under 35 USC § 314. This denial was based on several factors including the declaration of the petitioner’s expert Dr....
PTAB Denies Authorization to Submit Exhibit For Not Following the Rules
By Ryan Mueller, Sachin Patel, and Josh Nightingale - The PTAB recently granted a joint request to expunge an exhibit and contemporaneously denied the Patent Owner’s request for authorization to file a Motion for Leave to Submit the same exhibit in Bausch & Lomb...
A Petitioner’s Guide: Navigating Uncertainty on PGR Eligibility
By Ashvi Patel and Josh Nightingale - Samsung Electronics Co. (“Samsung”) recently faced the issue of determining whether U.S. Patent No. 11,163,823 (“the ‘823 patent”) is a pre- or post-AIA patent. Hedging its bets, Samsung concurrently filed two petitions—one...
Director Vidal Removes OpenSky and PQA from VLSI IPRs, Orders Sanctions
By Christian Roberts and Matt Johnson - On December 22, 2022, Director Kathi Vidal issued a pair of decisions in the OpenSky v. VLSI saga, dismissing OpenSky Industries LLC (“OpenSky”) and Patent Quality Assurance LCC (“PQA”) from their respective challenges of VLSI...
FWDs Issue in the Nick of Time to Suspend ITC Orders
By Steve Bradley, Emily Tait, and Marc Blackman - After finding that Apple infringed certain AliveCor patents related to wearable devices capable of monitoring a user’s cardiac activity, the International Trade Commission (“ITC”) entered a limited exclusion order and...