PTAB Applies General Plastic Factors to Serial Petitions Seeking Joinder
By David Linden and Dave Maiorana - In February 2023, T-Mobile USA, Inc. (“T-Mobile”) filed petitions requesting four inter partes reviews (“the T-Mobile IPRs”)—two of which challenged U.S. Patent No. 8,630,234 and two of which challenged U.S. Patent No. 10,880,721...
Failure to Challenge Patent Owner’s Assertions Proves Detrimental
By Evan Tassis and Matt Johnson - The PTAB recently denied institution of inter partes review of a patent directed to determining the pitch of roofs after finding that Petitioner failed to directly challenge the sufficiency of Patent Owner’s priority assertions in...
Common Inventorship And Technology Insufficient For 325(d) Denial
By Matt Johnson and Jack Graves— The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had previously...
PTAB Updates Procedures For Interim Director Review
By Sue Gerber and Matt Johnson - Effective July 24, 2023, the Patent Office updated its procedures for Interim Director Review (“DR”) of PTAB decisions. The updated procedures include the following key provisions: Expanding the process to permit parties to request DR...
Petitioner Faulted For Not Preemptively Addressing Fintiv
By RJ Shea and Matt Johnson - On July 17, 2023, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review petition based on the stature of a related U.S. District Court of Delaware...