Lessons Learned: Director Emphasizes Patent Quality in Evaluating General Plastic Factors
By Emily Tait - In the precedential decision Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017), the PTAB articulated seven non-exclusive factors to be considered before discretionarily denying a subsequent IPR petition...
Patent Owner Unable To Dodge PGR Due To Inadequate Written Description
By David Linden and Dave Maiorana - U.S. Patent No. 9,157,017 (“the ’017 Patent”) is assigned to Honeywell International Inc. (“Honeywell”) and is titled, “Compositions Containing Fluorine Substituted Olefins and Methods and Systems Using Same.” The detailed...
PTAB Strikes Two Untimely Exhibits
By Julia Paschwitz* and Matt Johnson - On September 21, 2021 a PTAB panel granted a motion to strike two Exhibits as not timely submitted by the Petitioner in Samsung Electronics America, Inc. v. Kannuu PTY LTD, IPR2020-00738. Those exhibits were submitted by the...
Motion for Additional Discovery Based on Unraised Arguments Denied
By Christian Roberts and Josh Nightingale – The Patent Trial and Appeal Board (“PTAB”) recently denied a Petitioner’s Motion for Additional Discovery. Scientific Design Co., Inc. v. Shell Oil Co., IPR2021-01537, Paper 18 (PTAB Aug. 12, 2022). In an inter partes...
IPR Estoppel A Paper Tiger?
By Lisa Furby, John Evans, and Michelle Smit - After a final written decision issues, an IPR petitioner is statutorily estopped from going back to the district court and arguing that the same claims are “invalid on any ground that the petitioner raised or reasonably...