One Party, One Voice
By Alex Li and Matt Johnson - An inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) is a proceeding of the petitioner versus the patent owner. In a situation where the petitioner or the patent owner consists of multiple entities, there may be a...
Thin Fintiv Factor Four Stipulation Sufficient For Institution
By Zach Sharb and Matt Johnson - On April 30, 2021, the PTAB instituted IPR trials based on petitions by Facebook, Inc. (“Petitioner”) challenging certain claims of U.S. Patent No. 8,645,300 (“300 Patent”), owned by USC IP Partnership, L.P. (“Patent Owner”) and...
Supreme Court Excuses Administrative Exhaustion for Some Structural Constitutional Claims
By Greg Castanias and Matt Johnson - In Carr v. Saul, the U.S. Supreme Court unanimously held that a party can raise a challenge under the Constitution's Appointments Clause to an Administrative Law Judge's ("ALJ") decision, even if the party did not raise the issue...
In Your Dreams – Additional PTAB Discovery Remains Elusive
By Dave Maiorana and Bobby Karl - Discovery in an IPR proceeding is limited compared to district court litigation in order to focus the proceedings and promote speed and efficiency. The PTAB Practice Guide and 37 C.F.R 42.51 provide for three types of discovery:...
PTAB Declines To Enter Adverse Judgment Against Pre-Institution Disclaimed Claims
By Andrea Beathard and Matt Johnson - Although the Federal Circuit had previously held that the PTAB may enter adverse judgment when a patent owner disclaims all claims challenged in an inter partes review (“IPR”) petition before an institution decision, in Pfizer,...