PRECEDENTIAL: Compelling Merits Analysis Only When Other Factors Indicate Denial
By Hannah Mehrle and Matt Johnson - In IPR2022-01242, Director Vidal clarified that her prior guidance, which allows the Board to institute inter partes review even if the Fintiv factors favor discretionary denial first requires the Board to find that Fintiv factors...
Supreme Court Requests Solicitor General’s Views On Important PTAB Estoppel Issue
By John Marlott and Sachin Patel* - What invalidity grounds is a petitioner barred from raising in parallel district court or ITC litigation after the petitioner previously challenged the patent and the PTAB has issued a final written decision? The U.S. Supreme Court...
Director Review Orders Additional Discovery On Time Bar-RPI Issue
By Jesse Wynn, Robert Breetz, Matt Johnson - In Samsung Electronics Co., Ltd. v. Netlist, Inc., the PTAB determined that a time-barred third party was not a real party in interest (“RPI”) and granted institution. IPR2022-00615, Paper 20 (Oct. 19, 2022) at 19...
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...