Once the PTAB institutes an IPR, the parties may only add supplemental information to the record by requesting authorization to file a motion to submit the information. See 37 C.F.R. § 42.123 (2022). If authorization is not...more
It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions. The PTAB has discretionarily denied IPR petitions, for example, due...more
On August 3, 2018, the U.S. Court of Appeals for the Federal Circuit dismissed an appeal from the USPTO Patent Trial and Appeal Board (PTAB) in JTEKT Corporation v. GKN Automotive Ltd. on the basis that the appellant lacked...more
In a pair of near identical decisions issued on December 19, 2017, an expanded PTAB panel found that the Regents of the University of Minnesota had waived its defense of sovereign immunity by filing actions against the...more
1/9/2018
/ Educational Institutions ,
Eleventh Amendment ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Sovereign Immunity ,
Universities ,
USPTO
Section 103 does not, by its terms, define the “art to which [the] subject matter [sought to be patented] pertains,” but longstanding precedent couches this question of fact in terms of “whether the art is analogous or not.”...more
The Federal Circuit’s decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., (Fed. Cir. No. 16-2321), expresses a growing discomfort with the Patent Office’s practice of joinder and expanded panels....more
8/25/2017
/ Administrative Law Judge (ALJ) ,
Appeals ,
Automotive Industry ,
Corporate Counsel ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Obviousness ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Statute of Limitations ,
USPTO
Less than four months after its decision in Covidien LP v. University of Florida Research Foundation Incorporated, finding that Eleventh Amendment sovereign immunity applies to PTAB proceedings, the Board has again dismissed...more