On December 21, 2020, the USPTO published its final rule allocating the burdens of persuasion for motions to amend and the patentability of proposed substitute claims in IPR, PGR, and CBM proceedings. This rule package follows up on the USPTO’s
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PTAB Finds Resolution of Real-Party-In-Interest Disputes Unnecessary If Decision Would Not Impact Institution Decision
On December 04, 2020, the PTAB designated as precedential its institution decision in Sharkninja Operating LLC, et al. v. iRobot Corporation, IPR2020-00734, Paper No. 11 (PTAB Oct. 06, 2020).Read more
PTAB Denies Institution of Follow-On Copycat Petition, Citing General Plastic
On December 4, the PTAB designated as precedential its decision in Apple Inc. v. Uniloc 2017 LLC denying both institution and a motion for joinder of a follow-on copycat petition. IPR2020-00854, Paper No. 9 (P.T.A.B. Oct. 28, 2020).Read more
Revised Dec. 9, 2020, PTAB Trial Rules Eliminate the Presumption in Favor of Petitioner at Institution
On December 9, 2020, the USPTO released revised rules for AIA trials, which implemented the following four changes:Read more
Successful Request for Rehearing in an Inter Partes Review
The Patent Trial and Appeal Board (PTAB) recently granted a rare request for rehearing in an inter partes review. See Shopify, Inc. et al. v. DDR Holdings, LLC, IPR2018-01012, Paper 35 (Oct. 26, 2020). Shopify had challenged DDR Holding’s U.S.…
It’s Not Too Late! Federal Circuit Confirms Evidence to Establish Printed Publication Status of Reference, Submitted Only in Reply, Can Be Considered
This Thanksgiving season, patent practitioners can be thankful for a Federal Circuit opinion clarifying how the Court considers evidence of public accessibility of references asserted in an inter partes review. See VidStream LLC v. Twitter, Inc., Appeal Nos. 2019-1734, 2019-1735…
Federal Circuit Declines to Direct District Court to Enter a Stay
In an order issued on September 28, 2020, the Federal Circuit denied Sand Revolution’s petition for writ of mandamus. In re Sand Revolution LLC, No. 2020-145, 2020 WL 5757591, at *1 (Fed. Cir. Sept. 28, 2020). In its petition, Sand…
First Impressions – Parties Must Make Their Cases in Their Initial Briefs
In In-Depth Geophysical, Inc. v. ConocoPhillips Co., IPR2019-00850, Paper 56 (Sept. 3, 2020), the Board reaffirmed that the grounds for unpatentability and the evidence supporting those grounds must be provided in the Petition itself, and that new arguments may not…
New Online Form to Support/Oppose Precedential Opinion Panel Requests
The Patent Trial and Appeal Board (PTAB) created an online form that allows individuals to submit amicus requests supporting or opposing a pending request for Precedential Opinion Panel (POP) review in a pending trial or patent application. The form requires…
Federal Circuit PTAB Appeal Statistics Through October 31, 2020
Through October 31, 2020, the Federal Circuit decided 787 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 578 (73.44%) cases, and reversed or vacated the PTAB on every issue in 104 (13.21%)…