Proof of Prior Art Requires Sufficient Corroboration By Credible Evidence
By Sue Gerber and Matt Johnson - Proof of prior art is an issue that often arises in inter partes and post grant review proceedings before the PTAB. In a recent decision, the Federal Circuit explained the quantum of proof that is required to establish prior art,...
Director Vacates PTAB Adverse Judgments in Precedential Director Review
By Misti Blount and Matt Johnson - Director Vidal’s sua sponte Director Review decision of Apple Inc. v. Zipit Wireless, Inc. (IPR2021-01124, -01125, -01126, -01129) was recently designated as precedential. The decision dealt an immediate setback for Apple and will...
Though Not A “Routine Avenue,” Petitioner Permitted To Submit Supplemental Information
By Ryan Mueller, Sachin Patel, and Matt Johnson - The PTAB recently granted Frameless Hardware Company LLC’s (“FHC”) motion to submit supplemental information to its expert’s original declaration in support of institution. FHC had filed two petitions against Patent...
Disclaimer Made in IPR Not Binding In Same Proceeding
By Sarah Geers, Ashvi Patel, and Stephanie Mishaga - The Federal Circuit recently held, in Cupp Computing AS v. Trend Micro Inc., that a disclaimer in an inter partes review (IPR) proceeding is not binding on the USPTO in the same proceeding in which the disclaimer is...
PTAB Denies Discovery of Draft Declaration
By Ashvi Patel, Marlee Hartenstein, and Matt Johnson - On November 18, 2022, a panel of three PTAB administrative patent judges denied a Patent Owner’s Request for Additional Discovery in Twitter, Inc. v. Palo Alto Research Center Inc., IPR2021-01398. The PTAB found...