Imprecise Claim Charts and Improper Incorporation By Reference Result in Institution Denial
By David Linden and Dave Maiorana - On March 23, 2024, Nearmap US, Inc. (“Nearmap”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 10,671,648 (“the ’648 Patent”) (“IPR716”), assigned to Eagle View Technologies, Inc. (“Eagle View”). The ’648...
Citing Issued Patent Instead of Pre-Grant Publication Almost Costs Petitioner
By Sabrina Bellantoni and Matt Johnson - Recently, the Patent Trial and Appeals Board (“PTAB”) released a final written decision finding no challenged claims were unpatentable in Duration Media LLC v. Rich Media Club LLC, IPR2023-00953, Paper 74 (August 19, 2024). Of...
PTAB Rule Permits Solo Representation and Automatic Pro Hac Vice Admission
By Nicholas D'Andrea and Matt Johnson - On October 10, 2024, the USPTO issued a final rule allowing parties to proceed without backup counsel in AIA proceedings and implementing an automatic admission process for pro hac vice attorneys. Full text of the final rule...
PTO Codifies Scope of Director Review in Final Rule
By Evan Tassis and Matt Johnson - On September 30, 2024, the USPTO issued a final rule governing the process for Director Review of proceedings under the AIA. This formalized the USPTO’s interim Director Review procedures implemented by the USPTO following the...
PTAB Deems Rule Set File A Printed Publication
By Carl Kukkonen - The Patent Trial and Appeal Board (PTAB) in an inter partes review: Keysight Technologies, Inc. and Palo Alto Networks, Inc. v. Centripetal Networks, LLC found a rule set file used by a network security program to be a “printed publication” under §...