686 articles · page 32 of 58
Issue Joinder Practices Poised to Reset As previously discussed, the Patent Trial & Appeal Board (PTAB) is now reconsidering its issue joinder practices . These practices were the subject of significant debate internal to the Board a few years back. The…
A few weeks ago, we discussed how patent prosecution practice is becoming commoditized. Since then, a number of firms and attorneys have contacted us and explained how their work and its quality sets them apart from all others. They claim their clients do…
A preliminary decision in the District Court of Delaware introduces the possibility that a patentee’s victory on assignor estoppel in the district court could quash a co-pending IPR proceeding at the PTAB. Assignor estoppel is applied to prevent a…
Court Takes Offense to Tactics Geared to PTAB Alone Litigants beware; Judge Rodney Gilstrap (E.D. Texas) warned litigants considered to be using the district court proceedings to posture positions in co-pending CBM proceedings that ‘[t]he Court does…
New Presentation of Same IPR Art Thwarted by Estoppel Post SAS, there are fewer exceptions to IPR estoppel . Indeed, the absence of partial institutions has led to many courts finding the “reasonably could have raised” aspect of IPR estoppel to…
PTAB Success a Relevant Consideration Under 35 U.S.C. § 285 After Octane Fitness , district courts “may determine whether a case is ‘exceptional’ in the case-by-case exercise of their discretion, considering the totality of the…
Federal Circuit Summary Before Chen , Mayer, and Bryson. Appeal from the Patent Trial and Appeal Board. Summary : Claims directed to the abstract idea of rules for playing a dice game are not transformed into patent eligible subject matter by the addition…
On November 9, 2018, Cook Medical LLC filed a petition with the Patent Trial and Appeal Board requesting inter partes review (IPR) of U.S. Patent No. 6,306,141 , assigned to Medtronic Vascular, Inc. The ‘141 Patent is entitled “Medical Devices…
PTAB Issue Joinder Practices to End As I predicted a few weeks back , the Patent Trial & Appeal Board is now moving Proppant Express Investments, LLC, Proppant Express Solutions, LLC v. Oren Technologies, LLC, (IPR2018-00914) to the Precedential Opinion…
Efficiency Considerations Determined at the Time of Institution Since the unraveling of partial institution practices in SAS Institute, stakeholders have speculated that the Patent Trial & Appeal Board may begin denying petitions that present…
Even Preliminary Proceeding Arguments Notice the Public It is well-established that statements made by a Patent Owner during an inter partes review (IPR) can constitute prosecution disclaimer— even in papers filed by a Patent Owner before the trial.…
Director’s Precedent Setting Power Likely to Unravel Issue Joinder? Four years ago, a divided panel of the Patent Trial & Appeal Board (PTAB) denied issue joinder under 35 U.S.C. § 315(c) as a matter of law (i.e., the joining of two petitions of…
