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PTAB Denies Parallel IPR Petition

The PTAB recently denied Intel’s (Petitioner) parallel IPR petition (IPR2023-01140) against AX Wireless (Patent Owner) challenging certain claims of U.S. Pat. No. 10,917,272. The denial came after Intel filed a separate...more

PTAB Rules Certificate of Correction is Not Retroactive in IPR

On remand from the Federal Circuit, the PTAB ruled that a patentee’s certificate of correction—issued after the Board invalidated the claims in a final written decision—could not be applied retroactively. After the IPR...more

New Theories Not Permitted In IPR Reply Brief

In Henny Penny Corp. v. Frymaster L.L.C., No. IPR2016-01435, (P.T.A.B. Mar. 16, 2017), the petitioner (HPC) challenged certain claims of U.S. Patent No. 8,497,691, owned by HPC’s competitor, Frymaster. The ’691 patent relates...more

No Basis For Broad Exclusion Of Inventor Testimony

The Board has broad discretion to determine how much weight should be given to inventor testimony, but as long as the testimony does not relate to the inventor’s opinion about the meaning of a claim term, there is no basis...more

Precedential: Live Testimony Not Permitted Absent Prior Declaration

In a recent decision that the PTAB designated as precedential, the Board denied a patent owner’s request to provide live testimony from the inventor of the challenged patent at the oral hearing. In DePuy Synthes Products,...more

The PTAB Must Address All Grounds, Even After Final Written Decision

Amazon.com, Inc. and Blizzard Entertainment, Inc. (“Amazon”) filed a petition for inter partes review challenging the validity of AC Technologies S.A.’s (“AC”) U.S. Patent No. 7,904,680. See IPR2015-01802. Amazon asserted...more

Typical Supplier/Co-Defendant Is Not An RPI Or Privy

In a recently published decision, the PTAB held that Samsung’s petition for inter partes review of a patent owned by The SEVEN Networks LLC was not time-barred under § 315(b). Samsung filed its petition less than one year...more

Failure to Appeal After SAS Results in Estoppel as to Non-Instituted Grounds

As the boundaries of estoppel post-SAS continue to unfold, one court has found that if a petitioner’s time for appealing a PTAB partial-institution decision had not yet run out at the time that SAS was handed down, then the...more

Seeking Adverse Judgment After Disclaimer? Ask For It Quickly

A few weeks ago, we posted an article discussing the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc., 880 F.3d 1345 (Fed. Cir. 2018). (see Disclaimer Before Institution May Not Avoid Adverse Judgment...more

Disclaimer Before Institution May Not Avoid Adverse Judgment Estoppel

In a split decision that drew separate opinions from each of the panel members, the Federal Circuit recently affirmed the PTAB’s decision to enter an adverse judgment against a patentee, even though the patentee had properly...more

Word Games At The PTAB

In 2016, the PTAB changed the limits for the length of certain filings in post grant proceedings, including petitions and responses, from limits based on the number of pages to limits based on the number of words. The USPTO...more

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