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District Court: Incorporation by Reference for Purposes of Anticipation Requires More than a Parenthetical

In a series of rulings on a motion in limine, the District of Delaware recently distinguished between what qualifies as being incorporated by reference and what does not for the purposes of an anticipation defense. In short,...more

PTAB Denies Motion to Compel Discovery of Evidence from Parallel ITC Investigation Due to Lack of Inconsistency

The PTAB denied a petitioner’s motion to compel routine discovery that sought information from a parallel ITC investigation for alleged inconsistent positions taken by patent owner in the IPR. The board found that patent...more

Unavailability of Witness for Cross-Examination Dooms Reliance on Affidavit Testimony in PTAB Proceeding

In a series of related inter partes review proceedings, the Patent Trial and Appeal Board recently granted a petitioner’s motion to strike the sworn affidavit of a witness who was unwilling to submit to cross-examination. In...more

Strength of Objective Indicia from Prior Litigation Overcomes Strong Obviousness Challenge in IPR

In a recent inter partes review (IPR), a patent owner overcame a facially persuasive obviousness challenge by relying on evidence from an earlier litigation to establish objective indicia of nonobviousness. In RTI...more

Withholding of Evidence Related to Offer for Sale, Filing False Declaration and Coercion by Patentee Support Finding of...

The Federal Circuit upheld a district court’s finding of inequitable conduct on the basis that appellants and its lawyers intentionally withheld material information involving the on-sale bar from the United States Patent &...more

Federal Circuit: PTAB May Not Institute on Grounds Left out of IPR Petition

The Federal Circuit recently addressed whether the Patent Trial and Appeal Board (PTAB) can institute inter partes review (IPR) on a ground not advanced by the petitioner, as well as whether the general knowledge of a person...more

Far-Reaching Effect of IPR Estoppel Dooms Invalidity Defense Based on Prior Art Product

Chief Judge Stark granted a patent owner’s motion for summary judgment of inter partes review (IPR) estoppel, holding that obviousness defenses based on a prior art product could not be asserted because a prior art...more

Invalidity Defenses Will Not Be Stricken at Pleading Stage Despite Defendant’s Earlier PGR Petition

A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more

PTAB Denies Request to Cross-Examine Experts Because Declarations Were Prepared for Other Proceedings and Were Not “Critical”...

In an ongoing inter partes review (IPR) proceeding, the Patent Trial and Appeal Board (the “Board”) denied Petitioner Nestlé Healthcare Nutrition, Inc.’s request to cross examine two expert witnesses after Patent Owner...more

References Introduced During IPR Proceeding Not Necessarily New Evidence to Which Patent Owner Had No Opportunity to Respond

On May 14, 2018, the Federal Circuit affirmed the Patent Trial and Appeal Board’s (the “Board”) Final Written Decision in an inter partes review (IPR) proceeding holding all claims of Anacor Pharmaceuticals, Inc.’s (“Anacor”)...more

IP Newsflash - May 2014

Supplemental Information Containing Petitioner’s Statements Allowed in IPR - A PTAB panel has granted a patent owner’s (owner) motion to submit supplemental information in an inter partes review (IPR). A motion to...more

IP Newsflash - May 2014

Improper Submission of New Evidence Undermines Patent Challenge - In its final written decision, a PTAB panel granted a patent owner’s (owner) motion to exclude evidence submitted by a petitioner in support of its...more

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