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Patent Owner Tip #16 for Surviving an Instituted IPR: Improve Your Chances of Getting Amendments

In our earlier blogs, we previously discussed when to file an amendment, when not to file an amendment, and the procedural guidelines for filing amendments pursuant to 35 U.S.C. § 316(d)(1). Below are four tips for improving...more

Patent Owner Tip #6 for Surviving an Instituted IPR: Using Objective Sources & Evidence to Support the Expert Declaration

As we have previously discussed, expert testimony is a critical aspect of the Patent Owner’s case-in-chief of an inter partes review (“IPR”) proceeding. In addition to retaining the right expert witness and maximizing that...more

Patent Owner Tip #3 for Surviving An Instituted IPR: How Patent Owner Experts Go from Zero to Hero

Drafting the expert declaration is another critical task for Patent Owners during the inter partes review (“IPR”) discovery period. As noted in our previous post, IPR expert witnesses provide declarations as affirmative...more

Informative Whirlpool Decision Reaffirms Importance of Secondary Considerations

Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”. In Whirlpool, the Board reversed the Examiner’s obviousness...more

PTAB Finds that Allowing IPR Petitioner to Avoid a Statutory Bar by Retroactively Adding Missing Real Party in Interest Is “In the...

Recently, in ZTE (USA) Inc. v. Fundamental Innovation Int’l LLC, IPR2018-00425, Paper No. 34 (Feb. 6, 2019), the Patent Trial and Appeal Board (“PTAB”) allowed Petitioner’s motion to retroactively correct its defective IPR...more

Double Check Your Filings, A Cautionary Tale at the PTAB

Recently in Nuna Baby Essentials, Inc. v. Britax Child Safety, Inc., IPR2018-01683, Paper No. 11 (PTAB Dec. 18, 2018), the Patent Trial and Appeal Board (“Board”) denied Petitioner’s motion to excuse the late filing of...more

PTAB Adopts the Phillips Claim Construction Standard in AIA Proceedings

Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent...more

PTAB Denies Institution of IPR after Successive Petitions by Unrelated Co-Defendants

Last week, the Patent Trial and Appeal Board (the “Board”) denied a second challenge to a patent where the petitioners were co-respondents in an ITC investigation. In Shenzhen Silver Star Intelligent Tech. Co., Ltd. v....more

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