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The Board therefore declined to exercise its discretion to terminate in view of a) the estoppel against Patent Owner in the continuation applications and any potential future continuation applications, b) the substantial resources expended by the parties and the Board, c) the Board having already decided the merits and having prepared a substantially complete final

In a recently-published redacted Final Written Decision, a panel of the Patent Trial and Appeal Board (“Board”) granted a motion to strike evidence against Petitioner under 37 C.F.R. §§ 42.5(a) and 42.71(a) for failing to comply with discovery obligations. The decision is notable because motions to strike are rarely granted, and as such, the decision

The PTO Director has issued interim procedures that bring much-needed clarity to the PTAB’s controversial practice of discretionarily denying petitions for IPR in view of parallel litigation. The interim procedures will go a long way in ensuring that the PTAB will now institute trial of meritorious IPR petitions.On June 21, 2022, PTO Director Katherine Vidal

Key Takeaways: 1. Delegation of Director Review of PTAB Final Written Decisions when the PTO Director is unavailable does not violate the Constitution. 2. The PTAB may permissibly consider and resolve the priority date of a challenged patent during IPR proceedings.Arthrex, Inc. v. Smith & Nephew, Inc., Case No. 2018-2140 (Fed. Cir. May 27,

Key Takeaway: Petitioner Moderna lost its first IPR appeal when the Federal Circuit dismissed for lack of Article III standing due, in part, to a gap in evidence that showed standing continued throughout the pendency of the appeal. Petitioner held on to the second IPR appeal, however, fortunately, filed after that evidence gap and it

Key Takeaway: The existence of a co-pending ITC investigation may not be enough to prevent institution of IPR proceedings, as the PTAB holds that the Fintiv factors do not justify discretionary denial under 35 U.S.C. § 314(a)Volkswagon Group of America, Inc. v. Arigna Technology Ltd., IPR2021-01321, Paper 10 (PTAB Feb. 15, 2022).Before: Baer,

Key takeaway: Where a petitioner files multiple petitions challenging different claims of the same patent, the petitioner should demonstrate that it could not have challenged all claims in a single petition or otherwise justify the need for multiple petitions.Fantasia Trading LLC v. CogniPower, LLC, IPR2021-00067, -68, -69, -70, -71, -72