Fish Post-Grant Radio: Episode #13: Rick Bisenius
Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more
All three of the challenges that the Patent Trial and Appeal Board (PTAB) instituted in 2022 resulted in a final written decision canceling the challenged patent. Two of the three final written decisions rendered in 2023 are...more
Precedential and Key Federal Circuit Opinions - 1. FINJAN LLC V. SONICWALL, INC [OPINION] (22-1048, 10/13/2023) (Reyna, Bryson, and Cunningham) - Cunningham, J. The Court vacated the district court’s judgment of...more
Expert Testimony Alone Insufficient to Show Examiner's Material Error in Considering Prior Art - In Nespresso USA, Inc. v. K-fee System GmbH, IPR2021-01222, Paper 9, at 25 (PTAB Jan. 18, 2022), the Board denied...more
The PTAB may sua sponte raise unpatentability grounds based upon the prior art of record when reviewing a motion to amend. Nike, Inc. v. Adidas AG, 955 F.3d 45, 51 (Fed. Cir. 2020). It is now clear, however, that the PTAB...more
WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more
On July 6, the USPTO’s Precedential Opinion Panel (POP) issued a precedential decision in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case IPR2018-00600, Paper 67 (P.T.A.B. July 6, 2020) (precedential), explaining the...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
Yesterday, the Precedential Opinion Panel (POP) designated two PTAB decisions as precedential and one as informative. The decisions relate to the Board’s discretion in instituting trial under 35 U.S.C. § 314 where the...more
A petition to institute an inter partes review (IPR) can only be filed on the basis of prior art consisting of patents and printed publications. But what makes a reference a “printed publication”? On December 20, 2019, the...more
On December 20, 2019, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) issued its decision in IPR2018-01039, addressing “What is required for a petitioner to establish that an asserted...more