Apple v. Iancu: Oral Argument on Motion to Dismiss and Plaintiff Summary Judgment Motion
By Nick Bagnolo and Michael Oblon - Since the PTAB designated Apple v. Fintiv precedential, the six-factor, “holistic” test has been increasingly used to discretionarily deny institution of petitions challenging claims already subject to parallel litigation...
Secondary Considerations Unhelpful Second Time Around
By Zach Sharb and Matt Johnson - On February 26, 2021, the PTAB found in favor of Fox Factory, Inc. (“Fox”) on remand and cancelled the challenged claims of SRAM LLC’s (“SRAM”) U.S. Patent No. 9,182,027 (the ’027 Patent), directed towards anchoring a bicycle’s drive...
Motion to Amend Burden Final Rule Published
By Grant Hebrank* and Josh Nightingale - The Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a final rule regarding the allocation of the burden of persuasion for the patentability of substitute claims on...
PRECEDENTIAL: Trial Court Stay Weighs Strongly Against Fintiv Denial
By Jennifer Bachorik and Matt Johnson - The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...
Arthrex: Supreme Court Asks “Who’s The Boss?”
By Nate Andrews, Greg Castanias, and Dave Maiorana - On March 1, 2021, the Supreme Court heard oral arguments in Arthrex v. Smith & Nephew, No. 19-1434, on March 1, 2021, asking whether the appointment of PTAB judges is consistent with the way that “Officers of...