News & Analysis as of

Due Diligence Inter Partes Review (IPR) Proceeding

Morgan Lewis - Tech & Sourcing

Contracting Pointers for Services Incorporating the Use of AI

While the regulatory landscape around artificial intelligence (AI) continues to evolve, navigating contractual arrangements and apportioning risk for the use of AI may seem like stepping into the unknown. In this blog post,...more

Goldberg Segalla

Federal Circuit Further Clarifies IPR Estoppel in California Institute of Technology v. Broadcom Limited

Goldberg Segalla on

Key Takeaways - Inter partes review (IPR) estoppel applies to all invalidity grounds that were and could have been reasonably asserted against the claims challenged in the IPR petition. Parties should decide whether...more

Jones Day

Federal Circuit says the PTAB used the Wrong Shade of Diligence

Jones Day on

As the sayings go, diligence is the mother of good luck, and necessity is the mother of invention. But for patents that fall under the pre-AIA, first-to-invent, system, proving diligence can be a necessity for invention. In...more

McDermott Will & Emery

Reasonably Continuous Diligence to Reduction to Practice is Enough

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit explained that diligence towards reduction to practice may be established by a showing of reasonably continuous activity. ATI Techs. ULC v. Iancu, Case Nos. 2016-2222, -2406,...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - January 2019: Unreviewed Filing Date Notice Dooms Petition

Petitioners beware. Your Notice of Filing date needs to be reviewed immediately – and not just the notice email, because the email does not alert petitioner to defects in filing....more

Hogan Lovells

US: Supreme Court hears argument on constitutionality of inter partes review

Hogan Lovells on

On November 27, 2017, the Supreme Court heard oral arguments in a case that will determine the constitutionality of inter partes review, a proceeding before the United States Patent and Trademark Office’s Patent Trial and...more

Foley & Lardner LLP

Swearing Behind A Reference With Reasonably Continuous Diligence

Foley & Lardner LLP on

In Perfect Surgical Techniques, Inc. v. Olympus America, Inc., the Federal Circuit vacated and remanded a USPTO Patent Trial and Appeal Board decision in an Inter Partes Review proceeding, finding that the PTAB imposed too...more

Foley & Lardner LLP

Estoppel Prevents Second IPR Petition Even When New References Were Missed By First Search

Foley & Lardner LLP on

In a case that appears to be a case of first impression, the PTAB found in its decision denying institution in IPR2016-00781 that a final written decision in an earlier IPR created estoppel under 35 U.S.C. § 315(e)(1),...more

Foley & Lardner LLP

Patent Due Diligence: All That Glitters May Not Be PTAB Gold

Foley & Lardner LLP on

An obvious but sometimes overlooked item when conducting patent due diligence is to check for PTAB proceedings (CBM, IPR, or PGR). Although the Patent Application Information Retrieval System (PAIR) does show whether patents...more

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