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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

Legislation: Will the Post-Grant Procedures Established by the AIA PREVAIL?

The Senate recently introduced a bill directed to substantially narrowing the scope of post grant proceedings, including Inter Partes Reviews (“IPRs”), before the Patent Trial and Appeal Board (“PTAB”). First introduced by a...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

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

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