Joinder Denied For Petitioner Whose Invalidity Case Was Dismissed With Prejudice
By Sue Gerber and Matt Johnson - In the PTAB’s recent decision in Code 200 v. Bright Data Ltd., IPR2021-01503, Paper No. 13 (PTAB Mar. 14, 2022), the PTAB expounded upon the circumstances in which joinder of a “me-too” case under § 315(b) was not warranted. In that...
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...
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...
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...
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...