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IPR “Booted” Where Images on Webpage Coupled with Evidence of Sales Deemed Insufficient to Establish Prior Art Status

The Patent Trial and Appeal Board has denied institution of an inter partes review for a design patent in part because the petitioner failed to show that three asserted references qualified as prior art. Specifically, the...more

Despite Instituting IPR, PTAB Invites Patent Owner to Re-Raise Challenge to Expert’s Qualifications at Trial

The Patent Trial and Appeal Board recently instituted an inter partes review where the patent owner argued that the petitioner failed to establish its expert as a person of skill in the art, which would have rendered the...more

D. Del.: Plaintiff’s Seeking Broader Construction in District Court Rather Than in Reexamination Does Not Preclude Reexamination...

In Victaulic Company v. ASC Engineered Sols., LLC, the District of Delaware ruled on summary judgment that ASC is estopped from asserting two obviousness grounds against a patent claim because it raised the same grounds...more

Inventor Declaration Excluded by PTAB Because Examination in Foreign Proceeding No Substitute for Cross-Examination by IPR Counsel

In two related inter partes review proceedings, the Patent Trial and Appeal Board granted a petitioner’s motion to exclude the declaration of an inventor because the patent owner failed to make him available for...more

USPTO Issues Guidance on “Applicant Admitted Prior Art” in IPRs

In an August 18 memorandum, the U.S. Patent and Trademark Office (USPTO) issued binding agency guidance on the proper role of “applicant admitted prior art” (AAPA) in inter partes review (IPR) proceedings. The memorandum...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

PTAB Institutes IPR Despite Petitioner’s Prior Invalidity Challenge in Declaratory Judgment Action, Citing “Unambiguous Language”...

On August 1, 2016, Canfield Scientific, Inc. filed a civil action in the District of New Jersey against Melanoscan, LLC, seeking a declaratory judgment of non-infringement of U.S. Patent No. 7,359,748 (“the ’748 Patent”). In...more

PTAB Allows Petitioner to Supplement Record Regarding Publication Date of Prior Art Reference

On October 23, 2017, a Patent Trial and Appeal Board (PTAB) panel granted Petitioner’s Motion to Submit Supplemental Information (“the Motion”) on the publication date of an asserted reference. At the time the Petition was...more

PTAB Denies Institution of Petitioner’s Second IPR Based on Newly Cited Prior Art Because Petitioner Knew of the Prior Art Before...

On March 20, 2017, a Patent Trial and Appeal Board (PTAB) panel declined to institute an inter partes review (IPR) of patent claims that were also the subject of a previously filed IPR by the same petitioner (IBM). IBM...more

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