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...
by John Marlott | Mar 2, 2018 | Estoppel
By: Tom Ritchie and John Marlott Petitioner Estoppel There is no doubt that “the potential for estoppel is one of the important considerations for defendants in deciding whether or not to file an [inter partes review (“IPR”)] petition.” Shaw Indus. Grp., Inc. v....
by John Marlott | Feb 21, 2018 | PTAB Trial Basics
By: John Marlott The AIA expressly anticipates and permits a patent owner and a petitioner to reach a settlement during the pendency of a post-grant proceeding. For IPRs, 35 U.S.C. § 317(a) is entitled “Settlement” and provides, in pertinent part: An inter partes...
by John Marlott | Oct 19, 2017 | Petitions
By John Marlott Serial IPR or CBM petitions challenging the same patent claims have been a recurring issue for the PTAB. On October 18, 2017, the PTAB designated as precedential a portion of a decision by an expanded panel that addressed this issue in General Plastic...
by John Marlott | Sep 1, 2017 | PTAB News
By Christian Damon and John Marlott In a prior post we compared the different standards for claim indefiniteness applied by courts in litigation and by the USPTO during pre-issuance and post-issuance proceedings. Another of our previous posts profiled a real-world...
