Experts and Expert Testimony in PTAB Proceedings
By Stephanie Mishaga and Matt Johnson - In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings. The panelists stressed that well-prepared...
Error Apparent? Federal Circuit Tackles Obvious Errors in Prior Art
By Sean Benevento, Mike Lavine, and Matt Johnson - In LG Electronics v. Immervision, the Federal Circuit clarified the standard for evaluating whether a prior art reference includes an obvious typographical error. See 39 F.4th 1364, 1365 (Fed. Cir. 2022). Under this...
Lessons Learned: Director Emphasizes Patent Quality in Evaluating General Plastic Factors
By Emily Tait - In the precedential decision Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017), the PTAB articulated seven non-exclusive factors to be considered before discretionarily denying a subsequent IPR petition...
Patent Owner Unable To Dodge PGR Due To Inadequate Written Description
By David Linden and Dave Maiorana - U.S. Patent No. 9,157,017 (“the ’017 Patent”) is assigned to Honeywell International Inc. (“Honeywell”) and is titled, “Compositions Containing Fluorine Substituted Olefins and Methods and Systems Using Same.” The detailed...
PTAB Strikes Two Untimely Exhibits
By Julia Paschwitz* and Matt Johnson - On September 21, 2021 a PTAB panel granted a motion to strike two Exhibits as not timely submitted by the Petitioner in Samsung Electronics America, Inc. v. Kannuu PTY LTD, IPR2020-00738. Those exhibits were submitted by the...