Multiple Dependent Claims are Treated as Multiple Claims
By Matt Chung and Matt Johnson - On February 24, 2023, Director Kathi Vidal issued a decision under director review granting rehearing and modifying the final written decision for Nested Bean, Inc. v. Big Beings USA Pty. Ltd. Nested Bean, Inc. (“Nested Bean”) filed a...
PRECEDENTIAL: Compelling Merits Analysis Only When Other Factors Indicate Denial
By Hannah Mehrle and Matt Johnson - In IPR2022-01242, Director Vidal clarified that her prior guidance, which allows the Board to institute inter partes review even if the Fintiv factors favor discretionary denial first requires the Board to find that Fintiv factors...
Supreme Court Requests Solicitor General’s Views On Important PTAB Estoppel Issue
By John Marlott and Sachin Patel* - What invalidity grounds is a petitioner barred from raising in parallel district court or ITC litigation after the petitioner previously challenged the patent and the PTAB has issued a final written decision? The U.S. Supreme Court...
Director Review Orders Additional Discovery On Time Bar-RPI Issue
By Jesse Wynn, Robert Breetz, Matt Johnson - In Samsung Electronics Co., Ltd. v. Netlist, Inc., the PTAB determined that a time-barred third party was not a real party in interest (“RPI”) and granted institution. IPR2022-00615, Paper 20 (Oct. 19, 2022) at 19...
PRECEDENTIAL: Institution Denied Based On Insufficiently Supported Expert Declaration
By Carl Kukkonen - In Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (Aug. 24, 2022) the PTAB denied institution of an Inter Partes Review under 35 USC § 314. This denial was based on several factors including the declaration of the petitioner’s expert Dr....