Motion for Additional Discovery Based on Unraised Arguments Denied
By Christian Roberts and Josh Nightingale – The Patent Trial and Appeal Board (“PTAB”) recently denied a Petitioner’s Motion for Additional Discovery. Scientific Design Co., Inc. v. Shell Oil Co., IPR2021-01537, Paper 18 (PTAB Aug. 12, 2022). In an inter partes...
IPR Estoppel A Paper Tiger?
By Lisa Furby, John Evans, and Michelle Smit - After a final written decision issues, an IPR petitioner is statutorily estopped from going back to the district court and arguing that the same claims are “invalid on any ground that the petitioner raised or reasonably...
“Voluntary Interrogatory Responses” Excluded As Inadmissible Hearsay
By Sue Gerber and Matt Johnson - While creativity has its place in advocacy, it can be taken too far. The Petitioner learned this lesson the hard way in Unified Patents Inc. v. American Patents LLC, IPR2019-00482, Paper 132 (P.T.A.B. Aug. 3, 2022). In this IPR, the...
PTAB Institutes PGR, Denies Conditional IPR Petition
By Nicolas Aalberg,* Evan Jones, and Matt Johnson - On June 10, 2022, the PTAB in Apple Inc. v. MemoryWeb LLC denied Apple’s “conditional” IPR petition but instituted review of Apple’s concurrently-filed PGR petition, finding that MemoryWeb’s U.S. Patent No....
Library Indexing Insufficient to Establish Public Accessibility
By Carl Kukkonen - In Salesforce.com, Inc. v. WSOU Investments, LLC d/b/a Brazos Licensing and Development, the Board denied institution of inter partes review of a patent directed to providing content to a limited display terminal (e.g., a PDA) because petitioner...