Statutory Disclaimer After Petition Bars Institution
By Hannah Mehrle and Matt Johnson - In IPR2023-01058, the PTAB declined to institute IPR, finding that Patent Owner had disclaimed all challenged claims under 35 U.S.C. § 243(a), in compliance with 37 C.F.R. § 1.321(a), such that there was no basis on which to have a...
Proceed With Caution When Using Wayback Machine® Prior Art
By John Marlott - Just because a document is archived on the Internet Archive’s Wayback Machine® does not necessarily qualify it as prior art for an IPR challenge. What is the Wayback Machine®? The USPTO describes it this way: The Wayback Machine® is a digital...
USPTO Director Orders Rehearing Panel Review of Second Denied IPR
By Ben Baek* and Carl Kukkonen - On November 16, 2023, USPTO Director Kathi Vidal ordered a Delegated Rehearing Panel (“DRP”) to review whether the PTAB misapprehended or overlooked certain issues when denying challenger SynAffix B.V.’s petition for inter partes...
Failure to Prove “Prior” Art Results in Denial
By Pranita Dhungana and Matt Johnson - The PTAB recently denied IPR institution in Sophos v. Open Text because the petitioner failed to show a reasonable likelihood that the asserted reference was, in fact, prior art. IPR2023-00732, Paper 23 (November 2, 2023)....
Another Bite? CAFC Allows Expansion of Arguments in Reply
By Evan Jones and Emily Tait - In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the “newness” nor...