Cross-Roads of Patent Litigation and IPR Practice
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.
Post-Grant Proceedings (3)
No Pain Relief at the PTAB: Inherent Obviousness
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...
COVID-19 Changes How Some Courts Consider Motions to Stay Pending IPR
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...
Hulu v. Sound View: The PTAB Sets New Precedent on How to Prove a Reference Is a Printed Publication
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 PTAB During COVID-19: What You Need to Know
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 Federal Circuit Slams the Door Closed On Same-Party Joinder
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...
Using Prosecution History in IPR: What You Say May Come Back to Help You
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...
Indefinite, but Obvious and Anticipated? Federal Circuit Tells PTAB Certain Indefinite Claims May Be Anticipated or Obvious
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 ...
The Federal Circuit Giveth, And The Federal Circuit Taketh Away
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...
Litigating Invalidity After IPR Resolution
An article written by Libbie DiMarco and Nathan Speed titled "Litigating Invalidity After IPR Resolution" was published in the Chicago-Kent Journal of Intellectual Property. Read more.
Supreme Court Oral Argument Review: The Justices Appear Split in Thryv v. Click-to-Call
The Supreme Court heard oral arguments in Thryv v. Click-to-Call Technologies last month. As we previously discussed, the case concerns whether the PTAB’s finding that a petition for IPR was timely fi...
The Federal Circuit Provides a Roadmap for Using Articles in IPR
Too often some challenger in IPR declines to use non-patent literature (or “NPL”), such as academic and trade journal articles, because of the effort and risk associated with establishing that the NPL...