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PTAB Allows Supplemental Information Request To Fly

Once the PTAB institutes an IPR, the parties may only add supplemental information to the record by requesting authorization to file a motion to submit the information. See 37 C.F.R. § 42.123 (2022). If authorization is not...more

PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence

It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions.  The PTAB has discretionarily denied IPR petitions, for example, due...more

PTAB Bar Association Hosts Inaugural Thought Leader Summit

On Tuesday, November 13th, the PTAB Bar Association held its inaugural Thought Leader Summit. The Summit featured two sessions on recent developments in the patent litigation field, as well as a keynote address from Acting...more

PTAB Recognizes Limits to Eleventh Amendment Sovereign Immunity

In a pair of near identical decisions issued on December 19, 2017, an expanded PTAB panel found that the Regents of the University of Minnesota had waived its defense of sovereign immunity by filing actions against the...more

Reference Reasonably Pertinent to One Problem Deemed Analogous Art

Section 103 does not, by its terms, define the “art to which [the] subject matter [sought to be patented] pertains,” but longstanding precedent couches this question of fact in terms of “whether the art is analogous or not.”...more

PTAB Sheds Light on Role of Prior Art in Discretionary Denial

The Patent Trial and Appeal Board (PTAB) recently designated as informative three cases involving discretionary denial of inter partes review under 35 U.S.C. § 325(d). We previously profiled the case of Hospira, Inc. v....more

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