Reverse Engineered Search Insufficient For IPR/PGR Estoppel
By Tom Ritchie - In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its post-grant review (PGR)...
“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial
By Daniel Sloan and Josh Nightingale - The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023). There, the PTAB held that (1) a Sotera...
Undated Screenshot Insufficient to Prove Public Accessibility of GitHub Repository
By Justice Hubbard, Robby Breetz, and Josh Nightingale - In AO Kaspersky Lab v. Open Text Inc., the PTAB denied inter partes review after determining that a screenshot of a GitHub repository was insufficient to establish that a whitepaper posted to that repository...
Petitioner Prevails In Institution Decision Do-Over After Director Steps In
By Connor Scholes, Ashvi Patel, and Josh Nightingale - On November 6, 2023, the PTAB issued an decision instituting inter partes review of U.S. Patent No. 10,681,009 B2 (“the ’009 patent”) in Keysight Technologies, Inc. v. Centripetal Networks, Inc., IPR2022-01421,...
Conception and Reduction to Practice Dates Matter
By Sabrina Bellantoni and Matt Johnson - In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by the...