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...
NEWS: USPTO Issues First Director Review Decisions
By Matt Johnson - On July 6th and 7th, the USPTO made good on its promise to not wait for a confirmed director to begin Arthrex Director reviews, issuing its first denials of review requests. The full press release is below: USPTO issues first Director review...
District Court Highlights Prior PTAB Invalidation
By Zach Sharb and Josh Nightingale - On May 26, 2021, the United States District Court for the Western District of Washington denied both defendant Valve Corporation’s (“Valve”) motion for judgment as a matter of law or a new trial, and plaintiff Ironburg Inventions...
Fed. Cir.: Don’t Expect PTAB to Do Your Work For You
By Albert Liou - The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with particularity. In the decision,...