Kathi Vidal Nominated for USPTO Director
By Mike Lavine and Matt Johnson - On October 26, 2021, President Biden nominated Kathi Vidal – the managing partner of Winston and Strawn’s Silicon Valley office – as Director of the United States Patent and Trademark Office (USPTO). Ms. Vidal is considered to be...
PTAB Strikes Patent Owner Sur-Reply Exhibits
By John Wright* and Matt Johnson - Rule 42.23(b) is clear, "A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply witness." In...
PTAB Permits Incorporation by Reference in Expert Declaration
By Alex Li and Josh Nightingale - The first step in requesting an inter partes review (IPR) of a granted patent is the filing of a petition before the Patent Trial and Appeal Board (PTAB), in which the petitioner states the grounds for the invalidity of the patent. ...
Fed. Cir. Rejects PTAB Decision on Mystery Shopper Patent; Returns to Sender
By Carl Kukkonen - The Federal Circuit in AMC Multi-Cinema, Inc. v. Fall Line Patents (Fed. Circ. September 30, 2021, op. 21-1051) held that the PTAB partially abused its discretion when upholding one claim of U.S. Patent No. 9,454,748 for which the patent owner Fall...
Some Conditions May Apply – Fintiv Factor 4 Analysis
By Alison Ibendahl and Albert Liou - In a recent decision, the Patent Trial and Appeal Board granted institution of inter partes review after accepting the Petitioner Microsoft’s stipulation to forego overlapping challenges in parallel district court proceedings...