by Matthew Johnson | Jan 21, 2020 | Evidentiary Issues, Petitions, PTAB News
By Alex Li and Matt Johnson – A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a “printed publication”? On December 20, 2019, the...
by Emily Tait | Sep 9, 2019 | Expert Witnesses, Petitions, Trial Institution
By Emily Tait The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive” General Plastic factors. See...
by Matthew Johnson | Aug 19, 2019 | Petitions, Trial Institution
By Levent Herguner and Matt Johnson In a recent decision, the PTAB decided to institute inter partes review (“IPR”) of U.S. Patent No. 7,937,394 B2 despite Patent Owner’s claims that Petitioner engaged in gamesmanship and asserted references and combinations that were...
by Matthew Johnson | Nov 30, 2018 | Petitions
By Sue Gerber and Matt Johnson The PTAB has discretion to deny “follow-on” petitions that challenge the validity of a patent that has been previously subjected to inter partes review. See 35 U.S.C. § 314(a); Gen. Plastic Indus. Co. Ltd. v. Canon Kabushiki Kaisha,...
by Carl Kukkonen | Nov 26, 2018 | Estoppel, Petitions
By Jocelyn Yu Ph.D. and Carl Kukkonen Assignor estoppel is a long-established, common-law doctrine of equity, which prevents a party who assigns a patent to another from later challenging the validity of the assigned patent. The doctrine also applies to parties in...
by David Cochran | Jun 11, 2018 | Petitions, PTAB Trial Basics
By: Jason Garr and Dave Cochran The recent PTAB order in IPR2017-01427 is a cautionary tale for petitioners considering multiple IPRs against a single patent. On May 11, 2017, Facebook and WhatsApp filed the ’1427 IPR petition challenging claims 1-8 of U.S. Patent...
