by David Maiorana | Dec 23, 2020 | 325(d) issues, Trial Institution
By Dave Maiorana and Zach Sharb – On December 7, 2020, the PTAB granted Activ Financial Systems, Inc.’s (“Activ”) petition for inter partes review of claim 43 and 44 of IP Reservoir LLC’s (“IP Reservoir”) U.S. Patent No. 10,062,115 (the ’115 Patent), directed...
by David Maiorana | Oct 15, 2020 | PTAB Trial Basics, Standing
By Dave Maiorana – It is well-established that a counterclaim for invalidity in a district court litigation does not trigger the 35 U.S.C. § 315(a) bar. See 35 U.S.C. § 315(a)(3). See also our previous posts here and here discussing strategies for declaratory...
by David Maiorana | Sep 3, 2020 | Estoppel, PGR
By Dave Maiorana – Due to the relatively low number of post-grant reviews (“PGR”) filed to date, not many district courts have spoken on the scope of PGR estoppel. In GREE, Inc. v. Supercell Oy, No. 2:19-cv-00071 (E.D. Texas), Magistrate Judge Payne in the...
by David Maiorana | Mar 26, 2020 | Federal Circuit Appeal, PTAB News
By Nate Andrews, John Marlott, and Dave Maiorana – On March 23, 2020, the Federal Circuit denied rehearing and rehearing en banc in Arthrex. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order Denying Rehearing and Rehearing En Banc, Dkt. 115. The...
by David Maiorana | Mar 23, 2020 | Federal Circuit Appeal, Joinder
By Dave Maiorana – The Federal Circuit has definitively ruled on the PTAB’s practice of allowing so-called “same-party” IPR joinder. The court held that an IPR petitioner cannot join itself as a party to an existing IPR and cannot add new arguments or issues...
