Board Requires Settlement Agreement to Dismiss Pre-Institution Proceeding
By Hannah Mehrle and Matt Johnson - Biofrontera AG (“Petitioner”) filed an unopposed motion to dismiss the petition during the preliminary phase of the proceedings. Here, DUSA Pharmaceuticals, Inc. (“Patent Owner”) had not yet filed a Preliminary Response, and the...
PTAB Denies One of Multiple Petitions, Leaving Claims Unchallenged
By Carl Kukkonen - On December 14, 2021, the PTAB instituted Post-Grant Review (PGR) for certain claims of U.S. Pat. No. 10,855,671 (the ‘671 Patent) in Netskope, Inc. v. Bitglass, Inc., PGR2021-00091 while, on the same date, denying institution of a PGR for different...
Use Caution When Mapping Multi-Forum Patentability Attack
By Sachin Patel and Matt Johnson - A recent PTAB decision in Sattler Tech Corp. v. Lyu represents an important reminder to carefully review the procedural and substantive requirements for filing a petition for an AIA trial, especially when dealing with declaratory...
PGR Filings Tick Up, But Still Infrequent
By John Marlott - PGR petition filings were up slightly over the prior USPTO fiscal year, but the long-term historical trend continues to show that PGR challenges remain relatively infrequent. We recently reported on the PTAB’s release of its final statistics for...
Expired Patents Can Be Challenged
By Amanda Simms* and Sarah Geers - Although it may seem counterintuitive, the PTAB has jurisdiction over expired patents, and patent owners may need to defend their expired patents in inter partes review. The PTAB recently reiterated this in Apple, Inc. v. Gesture...