On Friday, February 28, the Patent Office officially rescinded Dr. Vidal’s June 21, 2022, memorandum addressing IPR discretionary denial (“2022 Memorandum”). The 2022 Memorandum provided guidance to the PTAB in applying...more
Parties in inter partes review proceedings often dispute whether a reply to a patent owner response is truly responsive or instead an attempt to introduce new arguments that are not reasonably tied to those set out in the...more
In a precedential opinion issued this week, the Federal Circuit held that Applicant Admitted Prior Art (“AAPA”) does not constitute “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b) and thus...more
The Federal Circuit issued an en banc decision in Click-to-Call Technologies, LP v. Ingenio, Inc, Yellow Pages.com, LLC (Case No. 2015-1242), finding that a voluntary dismissal without prejudice of a lawsuit does not reset...more
The PTAB has declined to institute proceedings on challenged claims on the basis that one or more of the challenged claims is indefinite. See, e.g., IPR2015-00662, IPR2013-00036. While this may seem like a positive outcome...more
Petitioners are best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to (1) the limited space Petitioner has to make its arguments, and (2) estoppel based...more
The Supreme Court issued two decisions today in the cases of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., and SAS Institute Inc. v. Iancu, addressing inter partes review (IPR). In Oil States, the...more
4/25/2018
/ America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SCOTUS ,
Seventh Amendment ,
USPTO
Defendant Hewlett Packard filed a Petition for IPR challenging claims of U.S. Patent No. 6,218,930 as invalid in view of two prior art references. On the same day Defendant requested joinder with an earlier filed IPR that...more
On Tuesday, August 30, the Federal Circuit vacated the Patent Trial and Appeal Board’s denial of a motion to amend. Veritas Techs. LLC v. Veeam Software Corp., Case No. 15-1894. The Federal Circuit found that “the Board was...more
On Monday, June 20, the Supreme Court issued a much anticipated decision upholding the PTAB's use of the Broadest Reasonable Interpretation standard for claim construction and confirming that the decision to institute is...more