Can Amendment Save Your Claims in IPR?
In the past, moving to amend the challenged claims during IPR was largely futile. The PTAB denied nearly all motions to amend, and many patent owners that might have benefited from amendment chose not...
Post-Grant Proceedings (4)
Continued Uncertainty About Estoppel Highlights the Importance of Preparing Carefully
Challengers in post-grant proceedings like IPR may not reassert invalidity arguments in court that they “raised or reasonably could have raised” before the PTAB. Several recent cases illustrate that w...
Supreme Court Preview: What Can a Patent Owner Do When the PTAB Institutes an IPR That the Statute Doesn’t Permit?
The statute that created inter partes review (IPR) defines certain situations when IPR is not available. For example, IPR is not available if the petitioner was served with a complaint alleging infrin...
What’s Estoppin’ You? – Beware the Barriers of Asserting Judicial Estoppel
Judicial estoppel is an equitable doctrine that precludes a party from taking a position in one proceeding that is inconsistent with a position the party took in a previous proceeding. It can be used ...
IPR Estoppel May Apply to Product-Based Defenses
Under the estoppel provisions of 35 U.S.C. § 315(e), if an IPR results in a final written decision, the petitioner is barred from raising invalidity arguments in court or the ITC based on any grounds ...
In Follow-On IPR Petitions, Different Prior Art May Not Be Considered Substantially Different
An IPR follow-on petitioner may find it particularly challenging to select the best prior art references and arguments to submit to the PTAB. To make matters worse, the PTAB may decide to invoke its d...
PTAB Panel Denies IPR Institution Under § 314(a) in View of Parallel District Court Litigation
For months, panels at the PTAB have debated the relevance of parallel district court litigation on the PTAB’s discretion under 35 U.S.C. § 314(a) to institute or deny a petition for IPR. On May 7, 201...
The Internet is Forever: Costs of Oversharing Online
A critical and early determinant in any procedural review is an examination of the permissibility of individual pieces of evidence. In matters of intellectual property, and particularly in IPRs, the p...
Did I Say That? The Narrow Divide Between § 102 and § 112 Arguments
While a line of argument in an IPR may seem promising to a patent owner addressing one particular ground of rejection, it is critical for the patent owner to analyze how the argument may impact other ...
Isn’t it Obvious to Optimize for Better Results?
Just because your issued patent was examined by the USPTO does not mean that it is free from challenge. Your competitors may, of course, scrutinize your patent and use IPR to challenge its validity—po...
To Prove a Printed Publication, Petitioners Should Connect All the Dots
You found a great prior art reference for your IPR petition. But if that reference isn’t a patent or patent application, you’ll need to think carefully about how to prove that the reference was actual...
The Patent Office POPs the Door Open for Same-Party Joinder
In September 2018, the Patent Office created the Precedential Opinion Panel (or “POP”) to increase transparency and predictability of proceedings before the PTAB by establishing precedent that would g...