by John Marlott | Dec 28, 2018 | Federal Circuit Appeal
By John Marlott – Estimates are that roughly 80% of IPRs involve a challenge to a patent being asserted against the petitioner in a district court litigation. Typically, in those IPRs, if the litigation-defendant-petitioner loses at the PTAB, there is no...
by John Marlott | Oct 18, 2018 | Final Written Decisions, Request for Reconsideration, Trial Institution
By T. Kaitlin Crowder, John Marlott, and Dave Cochran The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other...
by John Marlott | Sep 9, 2018 | Estoppel
By: John A. Marlott The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the applicant regards as...
by John Marlott | Jul 19, 2018 | CBMs
By: Lisa Furby and John Marlott A Covered Business Method (“CBM”) patent review permits a petitioner to challenge a patent having claims “used in the practice, administration, or management of a financial product or service,” and that do not claim a “technological...
by John Marlott | Apr 11, 2018 | Estoppel
By: John Marlott The AIA prohibits institution of a post-grant proceeding when the petitioner previously “filed a civil action challenging the validity of a claim of the patent.” 35 U.S.C. § 315(a)(1). PGR petitions (including CBM petitions) are subject to the same...
