FedEx Delivery Sufficiently Akin to Priority Mail Express for Petition Service
By Hannah Mehrle and Matt Johnson - A PTAB panel found FedEx sufficiently akin to Priority Mail Express to meet the petition service rule, and to the extent necessary further waived the regulatory requirements related to the timing of Petitioner’s (TIZ Inc. d/b/a...
Conditional Offer to Abandon Claims Does Not Constitute Waiver to Assert
By Phillip Shelton* and Carl Kukkonen - According to a recent district court opinion, a party may waive its right to assert infringement on claims that it voluntarily agrees to give up (e.g., by abandoning the claims). Such a waiver will be enforced as an equitable...
Machine Learning to Evaluate Genetic Data Held to be Patent Ineligible
By Carl Kukkonen and Stephanie M. Mishaga - The Federal Circuit recently affirmed a Patent Trial and Appeal Board (PTAB) finding that certain claims related to genetic inheritance data analysis are patent ineligible. The claims at issue sought to protect applying a...
PTAB Provides Notice Of Sua Sponte Motion to Amend Ground
By Sarah Brickey and Matt Johnson - The precedential ruling in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020) allows the Patent Trial and Appeals Board (PTAB) to raise an issue regarding substitute claims that was not...
Institution Mandamus Review Limited to Colorable Constitution Claims
By Robby Breetz and Dave Maiorana - In Mylan Labs Ltd. v. Janssen Pharmaceutica N.V., the Federal Circuit reaffirmed it lacked jurisdiction over appeals from the PTAB denying IPR institution, noted that it had jurisdiction over requests for mandamus, but that mandamus...