How PTAB Is Defining Printed Publication
(as published by Law360) What constitutes a prior art “printed publication” is a significant question in many patent validity challenges. The Federal Circuit has wrestled with the question since the c...
Post-Grant Proceedings (7)
In IPR Petitions, Paste Makes Waste
The PTAB recently signaled a warning to petitioners about the dangers of third party submissions made during patent prosecution—even during prosecution of a separate but related patent. For patent hol...
Discretionary Denial: Even the “Best” Prosecution Prior Art May Not Be Right for an IPR
A pair of recent PTAB institution decisions highlights that petitioners should be cautious when relying on prior art that was cited during the prosecution of the challenged patent. Pursuant to 35 U.S....
PTAB Left to Mitigate the Damage from Collateral Estoppel
Collateral estoppel, or issue preclusion, is the legal doctrine that bars a litigant from re-litigating in subsequent litigations an issue that it lost in an earlier litigation. The doctrine had been ...
For PTAB Declarations, Better to Fly Solo
Many things in life are better done with someone else: board games, dinner parties, road trips, riding tandem bicycles. However, according to the PTAB, there’s one particular area where it’s best to f...
Proving Them Wrong: FDA Skepticism Helps Save Patent Claims
Evidence of skepticism of others in an IPR can be used to support the patentability of claims in response to obviousness challenges—skepticism is a standard “objective indicia” or secondary considerat...
One Missing Link Can Break an Obviousness Argument
IPRs are often filed to challenge important patents – the same patents likely to be tested in litigation. In such circumstances, parties should pay careful attention when asserting arguments in the IP...
Tipping the Scales in IPR with Effective Expert Testimony
Expert testimony is a feature of most IPRs, and effective expert testimony can make or break a party’s position. When evaluating expert testimony, the PTAB may consider several issues. First, are the ...
A Rare Binding PTAB Decision: Guidance On Multiple Petitions
An article authored by Jennifer Bush titled “A Rare Binding PTAB Decision: Guidance On Multiple Petitions” was published in Law360. In this article, Jennifer discusses the PTAB’s decision in General P...