by David Maiorana | Dec 13, 2017 | Federal Circuit, Trial Institution
By Dave Maiorana The PTAB’s practice of partially instituting IPRs has been in the news lately, with Jones Day recently arguing against that practice at the Supreme Court on behalf of the SAS Institute (“SAS”). On December 5, 2017, the week after the Supreme Court...
by David Maiorana | Oct 23, 2017 | Stay
By Allison Haugen and Dave Maiorana In August 2016, Google petitioned for Inter Partes Review of U.S. Patent No. 7,552,124 (owned by IXI Mobile), asserting that claims 1–10 are unpatentable. In March 2017, the PTAB instituted the IPR as to claims 1–5, but denied...
by David Maiorana | Sep 8, 2017 | PTAB Trial Basics
By Allie Terry and Dave Maiorana As we have previously discussed (on February 1, March 1, March 30, and May 19), reliance on secondary considerations of non-obviousness has been hit or miss for patent owners trying to convince PTAB panels that the secondary...
by David Maiorana | Aug 5, 2017 | PTAB Trial Basics
By Dave Maiorana In October 2016, we posted about a Federal Circuit decision addressing whether assignor estoppel bars a party from filing an inter partes review petition. In Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., the court held that it...
by David Maiorana | Jun 22, 2017 | 325(d) issues, Prior Art Issues
By Dave Maiorana It is not always possible for a party seeking to challenge a patent in an IPR to find prior art patents or printed publications that the USPTO has not already considered. Often the best available prior art comes from the references cited to (or by)...