PGR Ineligible – Petitioner Failed to Show Post-AIA Priority
By Hannah Mehrle and Matt Johnson - Ocado Group (“Petitioner”) filed a petition requesting a post-grant review of a claim from U.S. Patent No. 10,696,478 (’478 Patent) owned by AutoStore Technology (“Patent Owner”). The Board concluded that the Petitioner did not...
PTAB Denies Patent Owner’s Last-Minute Discovery Request
By Carl Kukkonen - In Unified Patents, LLC f/k/a Unified Patents Inc. v. Electronics and Telecommunications Research Institute (IPR2021-00827), the PTAB denied a patent owner's request to file a motion for additional discovery into any real parties-in-interest. Here,...
Post-Arthrex PTAB Appeals Mostly Moving On From Constitutional Kerfuffle
By John Evans, Dave Maiorana, and Steven Nosco* – This is a follow up to our earlier post about the fallout from the Supreme Court’s June 21, 2021 decision in U.S. v. Arthrex, holding that PTAB APJs were unconstitutionally appointed because they exercised “principal...
Printed Publications: Simply Existing Isn’t Enough
By: Nick Bagnolo and Matt Johnson - When filing an IPR, petitioners should be careful not to take for granted one of the most fundamental aspects of challenging validity in this forum: Whether or not the relied upon references qualify as prior art. Pursuant to 35...
Disclaimer Before Institution May Not Thwart PGRs
By Jianle Wang,* Stephanie Mishaga, Matt Johnson - In Microsurgical Tech., Inc. v. Regents of the Univ. of Colorado, No. PGR2021-00026, Paper 12 (P.T.A.B. June 16, 2021), the Patent Trial and Appeal Board (“PTAB”) held that disclaimed claims should be considered for...