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Evidence Patent Owner Preliminary Response

Jones Day

Introducing Evidence Before Authorization May Result in Expungement

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Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement. A recent motion met such a fate in Ice Castles, LLC v....more

Jones Day

Strategic Decision to Forgo Expert Does Not Allow a “Second Bite”

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The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive”...more

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

PTAB Strategies and Insights - August 2018: Petitioners Must Have Premonition to Win

Measure twice cut once – the same can be said of the Petition in American Invents Act (“AIA”) proceedings. Time and again the Board and Federal Circuit[i] have used the Administrative Procedure Act[ii] (“APA”) – guaranteeing...more

Jones Day

Practical Tips from the Judges’ Panel at the PTAB Judicial Conference

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On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more

Foley & Lardner LLP

Getting The Last Word: Requesting a Patent Owner Sur-Reply in AIA-PTAB Proceedings

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Practitioners are familiar with the typical submission process in America Invents Act (“AIA”) – Patent Trial and Appeals Board (“PTAB”) proceedings. First, the Petition is filed, and then the Patent Owner may submit a Patent...more

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

Petitioners Face A Heightened ‘Motion To Combine’ Threshold

The Board has moved the 103 target without warning. As noted in last month’s article on POPR (Patent Owner Preliminary Response) declarations, the Board is using POPR declarations to deny institution for lack of motivation...more

Jones Day

When is a Conference Paper Publicly Accessible: Lessons Learned

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In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, the PTAB provided new guidance to practitioners regarding the eligibility of conference papers as printed publications for use as prior art references...more

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

Post-Grant Proceedings: The Top Seven Things You Should Know About the Proposed Rule Changes

On August 20th, the U.S. Patent and Trademark Office published proposed rules that would amend the consolidated set of rules currently governing Inter Partes Reviews, Post-Grant Reviews, Covered Business Method Reviews, and...more

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