by Matthew Johnson | Mar 19, 2021 | PTAB Trial Basics, Trial Institution
By Sachin Patel and Matt Johnson – The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite. On June...
by Michael Oblon | Mar 16, 2021 | PTAB News, Trial Institution
By Nick Bagnolo and Michael Oblon – Since the PTAB designated Apple v. Fintiv precedential, the six-factor, “holistic” test has been increasingly used to discretionarily deny institution of petitions challenging claims already subject to parallel litigation...
by Matthew Johnson | Mar 5, 2021 | PTAB News, Trial Institution
By Jennifer Bachorik and Matt Johnson – The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...
by Tom Ritchie | Feb 25, 2021 | Trial Institution
By Tom Ritchie – The PTAB considers the six Fintiv factors to determine whether to exercise its discretion to deny institution of an IPR petition in view of a parallel litigation. In that analysis, Fintiv factor four requires the PTAB to evaluate the overlap...
by Matthew Johnson | Feb 12, 2021 | Amendment Practice, Trial Institution
By Andrea Beathard and Matt Johnson – On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials. First, Vice Chief Judge Michael Tierney discussed what...
by Matthew Johnson | Feb 10, 2021 | Trial Institution
By Sean Benevento*, Mike Lavine, and Matt Johnson – The PTAB recently held that the General Plastic factors weighed in favor of denying a follow-on IPR petition filed after the Patent Owner filed a preliminary response to an earlier petition challenging the same...