PGR Eligibility: An Uphill Climb For Transition Patents
By Sue Gerber and Matt Johnson - A patent is eligible for post-grant review (“PGR”) only if the patent is subject to the first-inventor-to-file provisions of the AIA. In Tricam Indus., Inc. v. Little Giant Ladder Sys., LLC, the PTAB explained that determining whether...
PTAB Bar Association Launches Portal for Precedential Decision Nomination
The PTAB’s Standard Operating Procedure 2 permits the public to submit nominations for PTAB decisions that an individual believes should be designated as precedential or informative, or to suggest that a decision previously designated as precedential or informative...
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...