In the time since the America Invents Act (AIA) created the Patent Trial and Appeal Board (PTAB), inter partes review (IPR) and other PTAB proceedings for challenging patents’ validity have proven to ...
Seeking judicial review of an IPR decision can be a trap for the unwary. Section 319 permits a “dissatisfied” party to appeal. And while the language may seem simple, it can lead parties astray. This ...
Per the express language of 35 U.S.C. § 311, a petitioner in an IPR may request cancellation of a claim “only on a ground that could be raised under section 102 or 103.” In other words, an issued clai...
An article written by Greg Corbett and Libbie DiMarco titled "Cross-Roads of Patent Litigation and IPR Practice" was published in IP Litigator. Read more.
Even when certain elements in a claimed method are not expressly disclosed in the prior art, the claim can still be held obvious if the missing elements are supplied in the form of an inherent propert...
A stay is an important mechanism for many defendants to consider when filing an IPR. Due to the ongoing pandemic, courts have had to shift resources to address COVID-19-related concerns. In some insta...
Invalidity grounds in IPR that are not based on patents must be based on printed publications. But the nature of the evidence required at the time of institution to show that a non-patent reference is...
Appearing before the Patent Trial and Appeal Board (PTAB) looks different as a result of COVID-19. The PTAB recently held a “Boardside Chat” to talk about how PTAB practice has changed. Here are some ...
The March 2019 decision from the PTAB’s Precedential Opinion Panel (“POP”) in Proppant Express Investments v. Oren Technologies held that petitioners can in some situations join issues to their pendin...
Prosecution history can be a minefield in patent cases, and IPR is no different. In the context of construing patent claims, much of the focus is often on whether the patent owner disclaimed particula...
Patent claims that could be indefinite have long raised tricky issues for parties in IPR. Should petitioners challenge in IPR claims they think are indefinite? What should the PTAB do if it concludes ...
That is the gist of a recent decision by the court, which permitted an IPR Petitioner to use “general knowledge” to fill in missing claim limitations in certain circumstances, but also constrained the...