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
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PTAB Grants Motion to Strike Evidence as Untimely Produced
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…
PTO Director Vidal Issues Interim Procedure Regarding Discretionary Denials Under Fintiv
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…
Federal Circuit Holds that Delegation of Director Review in PTAB Proceedings Does Not Violate the Constitution
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,…
Federal Circuit Limits Use of “Admitted Prior Art” in IPR Proceedings
In underlying inter partes review proceedings (IPR2020-1558, -1559), Apple asserted as an invalidity ground that certain claims of a Qualcomm patent were invalid based on “applicant admitted prior art” (AAPA) in view of a prior art published patent application. The Patent Trial and Appeal Board agreed with Apple and held the claims invalid. Qualcomm appealed,…
Federal Circuit Overrules Shaw Industries and Clarifies Scope of 35 U.S.C. § 315(E)(2) Estoppel
Key Takeaway: Shaw Indus. Group, Inc. v. Automated Creel Systems, Inc. is no longer good law. 35 U.S.C. § 315(e)(2) estoppel bars a petitioner from pursuing grounds in a parallel litigation that it raised or could have raised in an IPR proceeding that has reached a final written decision.California Institute of Technology v. Broadcom…
Timing Is Everything – Intervening Loss in Standing Results in Dismissal of First Appeal While Later Filed Second Appeal Proceeds to the Merits
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…
PTAB Engages in a § 112-Centric Analysis to Deny Institution
In certain circumstances, it may be appropriate for petitioners to raise § 112 issues in an IPR.
Google LLC v. Singular Computing LLC, Case IPR2021-00154, Paper 16 (May 12, 2021).Google LLC v. Singular Computing LLC, Case IPR2021-00154, Paper 16 (May 12, 2021).
Before: Arbes, Sawert, Repko.
Petitioner filed an IPR asserting a single ground of…
PTAB Bucks Trend and Institutes IPR, Rejecting Fintiv Argument Based on Parallel ITC Proceeding
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,…
Additional Petitions Denied Where Petitioner Could Have Challenged All Claims on at Least One Ground in a Single Petition
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…