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...
Legislation: Will the Post-Grant Procedures Established by the AIA PREVAIL?
By Nick Bagnolo and Kenny Luchesi - The Senate recently introduced a bill directed to substantially narrowing the scope of post grant proceedings, including Inter Partes Reviews (“IPRs”), before the Patent Trial and Appeal Board (“PTAB”). First introduced by a...
Explanations, Not Bare Citations, Needed To Establish Prior Art Date
By Ernie Oleksy,* Robby Breetz, and Matt Johnson - Although provisional applications can be used to secure an earlier date for 102(e), the petitioner bears the burden of production in establishing a prior art date for the asserted prior art. The Patent Trial and...
Board Denies Follow-On Petition
By Amanda Price* and Matt Johnson - In recent decision 3M Company v. Bay Materials, the Board denied 3M Company’s (“Petitioner”) second Petition for inter partes review (“Second Petition”) after exercising its discretion under § 314(a) and finding that each of seven...
PTAB Denial of Inter Partes Review under §325(d)
By Mike Lavine, Aska Fujimori-Smith,* Jetta Cook, and Matt Johnson - The Patent Trial and Appeal Board (“PTAB” or “Board”) recently denied inter partes review (IPR) of an electrocardiography monitor patent under 35 U.S.C. §325(d), finding that the same or...