Trial Practice Guidance, Inter Partes Review (IPR) Proceeding, Prior Art

Two Many IPRs: Different References Insufficient for Parallel IPRs

Jones Day on 1/23/2025

The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent. Shenzhen Root Tech. Co.,...more

Proposed Novel PTAB Discretionary Denial Analysis in View of Parallel Petitions

Womble Bond Dickinson on 12/14/2020

The authors have recently proposed alternative analyses for the discretionary denial of IPR and PGR petitions involved in parallel district court litigation, as well as for the discretionary denial of serial petitions filed...more

Issue Eighteen: PTAB Trial Tracker

Goodwin on 8/9/2019

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

USPTO Publishes PTAB Trial Practice Guide Update

Knobbe Martens on 7/19/2019

On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more

Discretionary Denial as a Case Management Tool: PTAB Requires Petitioner to Rank its Six IPR Petitions by Merit and then...

Knobbe Martens on 7/5/2019

Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by...more

PTAB Denies Entire IPR Petition as Voluminous and Excessive

Jones Day on 4/3/2019

In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny inter partes review of Perfect Company’s (“Patent Owner”) patent. Adaptics Ltd. v. Perfect Co., IPR2018-01596 (March 6, 2019). A panel...more