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In a quartet of recent decisions, the Federal Circuit has confirmed that SAS Institute extends beyond mandating the inclusion of all claims when trial is instituted, and extends to all grounds as well.  These decisions confirm that the Board’s “binary choice” is to institute (or not) on all claims challenged in a petition, as well as all grounds asserted in a petition.…
In Depomed, Inc. v. Purdue Pharma LP et al., 3-13-cv-00571 (NJD November 4, 2016, Mem. Op. Dkt. 238) (Bongiovanni, MJ), the Court analyzed and applied recent Federal Circuit decisions limiting the scope of post-IPR estoppel under 35 U.S.C. § 315(e) to only those claims and grounds subject to a final written decision from the PTAB.  However, the Court acknowledged the frustrations of the Patent Owner regarding the diminished “simplification of issues” achieved by the…
The USPTO recently announced a proposed new fee schedule in a Notice of Proposed Rulemaking (NPRM) in search of revenue to recover its projected $3 billion aggregated operating costs for the 2017 fiscal year. If enacted, it would be the Office’s most significant fee adjustment since March 2013. The Office is proposing to increase 205 existing patent and PTAB fees.  There are also 42 new fees being introduced or replacing one of the 14 fees…
As the automotive industry rebounds from its recessionary levels to an all time record level of spending on vehicles and healthy profitability, one of the key drivers of the increased vehicles sales has been increased innovation and major redesigns of vehicles. The number of new products in 2014 increased nearly 50% compared to the preceding 3 years and in 2015 alone, about 50 new or redesigned models were expected to hit the market. In order…
Oral hearings before the PTAB are the time to shine, to convince the judges why your position is right, why your opponent’s position is wrong, and to address questions head-on and reassure the judges regarding any real or perceived weaknesses in your case. Parties are typically granted up to one hour to argue their case – which is a lot of time to talk. Also, exchanges with the judges often will focus on the technical…