Panel Denies Joinder Based On Intervening Institution
By Hannah Mehrle and Matt Johnson - The PTAB denied a request for institution and joinder because the petitioner was the petitioner in one other instituted IPR directed to the same patent, and the petitioner did not explain adequately to the PTAB why another...
PTAB Reiterates Requirements for Additional Discovery
By Carl Kukkonen - The PTAB in a recent PGR proceeding: SWM International, LLC et al v. DynaEnergetics Europe GmbH (PGR2021-00097), reiterated the requirements for additional discovery. In particular, in this matter, the petitioner, having access to excerpts from...
Invalidation Of Patent Deemed Not To Moot IPR
By Annie Scantling, Robby Breetz, Matt Johnson - A PTAB panel recently denied Linquet Technologies, Inc.’s (“Patent Owner”) motion to dismiss an IPR proceeding as moot despite a district court having already invalidated the patent because the final written decision...
Presenting Complicated Technology Effectively at the PTAB
Jesse Wynn, Robert Breetz, Matt Johnson - The PTAB recently hosted a Boardside Chat on effectively presenting technology in AIA proceedings. Patent Trial and Appeal Board Boardside Chat: Presenting Technology in AIA Proceedings, (Nov. 17, 2022) (“Presenting...
Ex Parte Reexamination Barred Based on Earlier IPR
By Dhohyung Kim and Josh Nightingale - On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an earlier...