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.
Post-Grant Proceedings (4)
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...
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...
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 ...