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PGR Estoppel Continues to be Broad and Onerous

PGR Estoppel Continues to be Broad and Onerous

By Hannah Mehrle and Josh Nightingale - An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC.  Under Section 325(e)(2) of the AIA...

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No Supplemental Information Permitted To Fix Petition Faults

No Supplemental Information Permitted To Fix Petition Faults

By Carl Kukkonen - On February 28, 2022, in American Well Corporation v. Teladoc Health, Inc. IPR2021-00748, the PTAB denied a motion to submit supplemental information.  In this matter, the Board instituted a trial of all claims and all requested grounds.  In the...

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PTAB Does Not Provide a Supplemental Discovery Venue

PTAB Does Not Provide a Supplemental Discovery Venue

By Nick Bagnolo and Matt Johnson - Following the grant of institution of a recent IPR petition in the matter of Satco Products, Inc. v. The Regents of the University of California, IPR2021-00662, Paper 26 (PTAB Feb. 11, 2022) concerning U.S. Patent No. 10,644,213...

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RPI: Not Quite a Jurisdictional Requirement

RPI: Not Quite a Jurisdictional Requirement

By Mike Lavine, Matt Chung, and Matt Johnson - Recently, the Patent Trial and Appeals Board (PTAB) declined to terminate an inter partes review (IPR) proceeding despite the Petitioner’s alleged failure to identify all the real parties-in-interest (RPIs). Unified...

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PTAB Statistics Through Four Months of FY2022

PTAB Statistics Through Four Months of FY2022

By Matt Johnson – The institution rate for post-grant petitions in FY 2022 through the end of January 2022 (Oct. 1, 2021 through January 31, 2022) stands at 63% (279 instituted, 164 denied) compared to 59% in the previous fiscal year.  The Patent Office notes that on...

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