Prior Conception Defeats Otherwise Sufficient Derivation Showing
By Sarah Geers and Ashvi Patel - In its second-ever Final Written Decision in a derivation proceeding, the Patent Trial and Appeal Board ("PTAB") determined that a patent application for a biocidal composition and method of producing said biocidal composition did not...
New Case Theories Post-Institution; Better to Ask Permission
By Christian Roberts and Matt Johnson - Petitioners should be cautious of introducing a new theory in a Petitioner Reply before the PTAB. On February 7, 2023, the Patent Trial and Appeal Board (“PTAB”) entered a final written decision declining to find any claims...
Director Provides Insight On Interplay Between Written Description And Enablement
By Levent Herguner and Matt Johnson - USPTO Director Kathi Vidal recently vacated a PTAB decision denying institution of a post-grant review and remanded the case for further proceedings. The petitioner challenged claims 1–27 of the ’274 patent under 35 U.S.C. §...
How Long Is Too Long To Wait To Settle?
By Sue Gerber and Matt Johnson - An IPR “shall be terminated with respect to any petitioner upon the joint request of the petitioner and patent owner, unless the Office has decided the merits of the proceeding before the request for termination is filed.” 35 U.S.C....
Federal Circuit Holds Party Can Challenge PTAB Rulemaking
By Anthony Bautista and Matt Johnson - In Apple, Inc. v. Katherine K. Vidal, the Federal Circuit ruled that Apple and the other plaintiffs could continue their suit on a lone surviving challenge to the PTAB Director’s rulemaking procedures regarding institutional...