Prior Art Asserted in Second Petition Should Have Been Asserted in the First
By Adriane Elinski and Emily Tait - The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same patent...
Thickness Arguments Cross the Line for Federal Circuit
By Sue Gerber, Adriane Elinski, and Matt Johnson - When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are...
PTAB Fee Increases in 2025
By: Adriane Elinski, Daniel Sloan, and Matt Johnson - Petitioners may soon need to check their account balances, as the United States Patent and Trademark Office (“USPTO”) is raising patent fees across the board, effective January 19, 2025. 89 Fed. Reg. 91898....
Third Party IPRs Sway District Court’s Prevailing Party and Costs Rulings
By Connor Scholes, Daniel Sloan, and John Marlott - Third-party IPRs can moot previously favorable decisions and leave a previously successful party to bear its own costs. On October 16, 2024, Judge Rodney Gilstrap denied the plaintiff’s Motion to be Confirmed as the...
New Declarations with a Sur-reply Require Extraordinary Circumstances
By Adam Cook and Matt Johnson - In a 2-1 decision, the Patent Trial and Appeal Board (“PTAB”) denied a patent owner’s motion to file two new declarations in connection with its sur-reply, holding that the patent owner failed to prove the extraordinary circumstances...