Creative COVID-Time Deposition Procedure
By Alex Li and Matt Johnson - Depositions for proceedings before the Patent Trial and Appeal Board (PTAB) are usually taken in the U.S. See 37 C.F.R. § 42.53(b)(2), (b)(3). Furthermore, many foreign jurisdictions have restrictions on taking depositions within their...
District Court Indefiniteness Ruling Leads to Denial
By Sachin Patel and Matt Johnson – The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite. On June...
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...