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Replies in Inter Partes Review – How Far is Too Far?

Parties in inter partes review proceedings often dispute whether a reply to a patent owner response is truly responsive or instead an attempt to introduce new arguments that are not reasonably tied to those set out in the...more

Federal Circuit Confirms that AAPA May Not Form the Basis of a Ground in an IPR

In a precedential opinion issued this week, the Federal Circuit held that Applicant Admitted Prior Art (“AAPA”) does not constitute “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b) and thus...more

Exercising Care in Selecting Grounds is Even More Crucial Post-SAS

Petitioners are best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to (1) the limited space Petitioner has to make its arguments, and (2) estoppel based...more

E.D. Tex. Finds that Prior Art Estoppel Applies to References Rather than Specific Combinations of References

Defendant Hewlett Packard filed a Petition for IPR challenging claims of U.S. Patent No. 6,218,930 as invalid in view of two prior art references. On the same day Defendant requested joinder with an earlier filed IPR that...more

A Non-illusory Opportunity to Amend

The Patent Trial and Appeal Board ("Board") recently granted a motion to amend. A successful motion to amend is rare; only six have been granted to date. The case is Shinn Fu Co. of America Inc. et al. v. The Tire Hanger...more

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