USPTO Director Orders Rehearing Panel Review of Second Denied IPR
By Ben Baek* and Carl Kukkonen - On November 16, 2023, USPTO Director Kathi Vidal ordered a Delegated Rehearing Panel (“DRP”) to review whether the PTAB misapprehended or overlooked certain issues when denying challenger SynAffix B.V.’s petition for inter partes...
Failure to Prove “Prior” Art Results in Denial
By Pranita Dhungana and Matt Johnson - The PTAB recently denied IPR institution in Sophos v. Open Text because the petitioner failed to show a reasonable likelihood that the asserted reference was, in fact, prior art. IPR2023-00732, Paper 23 (November 2, 2023)....
Another Bite? CAFC Allows Expansion of Arguments in Reply
By Evan Jones and Emily Tait - In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the “newness” nor...
Error! PTAB Denies Motion for Supplemental Information to Correct Inadvertent Omission
By Albert Liou and Daniella Paredes - In Nanobebe US Inc. v. Mayborn (UK) Limited et al., the PTAB denied a Petitioner’s Motion to submit supplemental information, even though Petitioner argued the information had been inadvertently omitted in the original petition. ...
Institution Denied Based On Written Description in “Alternative Embodiments”
By Evan Jones and Evan McLean - On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487. IPR2023-00519, Paper 10. The ’487 patent relates generally to a...