Discovery Request Seeking Deposition Preparation Materials Denied
By Christian Roberts and Josh Nightingale - The Patent Trial and Appeal Board (“PTAB”) recently denied a Motion for Additional Discovery because the movant could not prove beyond mere speculation that the requested documents would be useful to show witness scripting....
Section 325(d) – Twelfth Time Not A Charm
By Sue Gerber and Matt Johnson - This blog has previously discussed PTAB’s exercise of discretion under Section 325(d). Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d) and instituted inter partes...
PTAB Statistics Through Two Months of FY2022
By Matt Johnson – The institution rate for post-grant petitions in FY 2022 through the end of November 2021 (Oct. 1, 2021 through Nov. 30, 2021) stands at 66% (138 instituted, 71 denied) compared to 59% in the previous fiscal year. The Patent Office notes that on a...
Board Requires Settlement Agreement to Dismiss Pre-Institution Proceeding
By Hannah Mehrle and Matt Johnson - Biofrontera AG (“Petitioner”) filed an unopposed motion to dismiss the petition during the preliminary phase of the proceedings. Here, DUSA Pharmaceuticals, Inc. (“Patent Owner”) had not yet filed a Preliminary Response, and the...
PTAB Denies One of Multiple Petitions, Leaving Claims Unchallenged
By Carl Kukkonen - On December 14, 2021, the PTAB instituted Post-Grant Review (PGR) for certain claims of U.S. Pat. No. 10,855,671 (the ‘671 Patent) in Netskope, Inc. v. Bitglass, Inc., PGR2021-00091 while, on the same date, denying institution of a PGR for different...