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PostGrant-Counsel Blog

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By: Troutman Pepper Hamilton Sanders LLP

Blog Authors

Tom Engellenner
Lana Gladstein
Sean Gloth
Maia Harris
John Isacson
Post Grant Counsel
Frank Liu
Ted Merkel
Griffin Mesmer
Ray Miller
Reza Mollaaghababa
Alicia Palladino
Shaleen Patel
Anthony Pisano
Kelly Rose
Ben Snitkoff
Nicole Stakleff
Joy Wang

Latest from PostGrant-Counsel Blog

PostGrant-Counsel Blog

Arthrex to be Reviewed

By John Isacson
October 15, 2020

Nothing has dominated the U.S. Patent and Trademark Office (PTAB) world like the Arthrex decision. Since October 2019, we have posted seven times about Arthrex and its progeny decisions. Now comes more.

On October 13, the U.S. Supreme Court granted…

PostGrant-Counsel Blog

IPR Estoppel Is Limited for Joinder Parties

By John Isacson
September 28, 2020

Network-1 Technologies, Inc. v. Hewlett-Packard Co., Appeal Nos. 2018-2338, -2339, -2395, -2396 (Fed. Cir., September 24, 2020).

Hewlett-Packard (HP) joined an IPR instituted by Avaya against Network-1’s ‘930 patent. HP only sought inter partes review on the grounds asserted by…

PostGrant-Counsel Blog

The Director’s Guidance on Applicant Statements

By John Isacson
September 2, 2020

USPTO Director Andrei Iancu recently issued a memorandum to the PTAB titled “Treatment of Statements of the Applicant in the Challenged Patent in Inter Partes Review under § 311.” Relying on Section 311, the memorandum permits the use of Applicant…

PostGrant-Counsel Blog

Printed Publications in Post-Grant Reviews

By John Isacson
August 5, 2020

GRÜNENTHAL GMBH v. ANTECIP BIOVENTURES II LLC, PGR2019-00026, -00027, 00028 (PTAB, July 28, 2020)

The PTAB issued decisions in a trio of post-grant reviews. One of the defenses put forward by the Patent Owner was that the asserted references did…

PostGrant-Counsel Blog

Section 101 Plays a Role in IPRs

By John Isacson
July 27, 2020

Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc., Appeal No. 2019-1686 (Fed. Cir., July 22, 2020).

Uniloc owned a patent entitled “System and Method for Adjustable Licensing of Digital Products.” In an IPR, petitioners Hulu and Netflix successfully challenged Uniloc’s…

PostGrant-Counsel Blog

IPR Decisions Are to Rely on the Adversarial Process

By John Isacson
July 9, 2020

Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, IPR2018-00600 (July 6, 2020)
Designated Precedential on July 6, 2020

Petitioner Hunting Titan challenged Patent Owner Dynaenergetics’ claims based upon anticipation and obviousness. During the trial, Patent Owner filed a motion to present…

PostGrant-Counsel Blog

There Is No Exception From Arthrex For Ex Parte Proceedings

By John Isacson
July 7, 2020

In re Boloro Global Ltd., Appeal Nos. 2019-2349, -2351 and -2353 (Fed. Cir., July 7, 2020).

Boloro appealed to the PTAB final rejections in three patent applications, which the PTAB ultimately affirmed. On appeal of the PTAB decisions to the…

PostGrant-Counsel Blog

The Obligation to Submit Agreements in IPRs Is Broad

By John Isacson
June 11, 2020

DTN, LLC v. Farms Technology, LLC,  IPR2018-01412, -01525 (June 14, 2019)

On June 11, 2020, the PTAB designated as precedential its 2019 decision in  DTN, LLC v. Farms Technology, LLC. The decision concerns the scope of the obligation to file…

PostGrant-Counsel Blog

GE Denied

By John Isacson
May 28, 2020

General Electric Co. v. Raytheon Technologies Corporation, fka United Technologies Corporation, Case No. 19-1012.

On February 24, 2020, we reported on GE’s petition for certiorari to the Supreme Court. The petition sought review of the Federal Circuit’s doctrine on Article…

PostGrant-Counsel Blog

Proposed PTAB Rule Changes

By John Isacson
May 27, 2020

On May 27, 2020, the Federal Register published proposed rule changes to trial procedures before the PTAB. The rule changes address and codify the following:
(1) Institution will be on all challenged claims or none, and on all asserted grounds…

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