In Schott Gemtron Corp. v. SSW Holding Company, Inc., the Patent Trial and Appeal Board (PTAB) granted the Petitioner’s motion to correct the filing date of its IPR petition based on a “clerical error” in uploading an incorrect exhibit.
2014
Deadline for submitting comments to USPTO on AIA trials is this Thursday
A quick reminder that this Thursday (October 16, 2014) is the deadline for submitting comments responsive to the USPTO’s Request for Comments on America Invents Act (AIA) trial proceedings, which was originally published in the Federal Register on June 27…
IPR Petition denied for failure to prove up amusement park brochure as printed publication
In A.R.M. Inc. v. Cottingham Agencies LTD., the Patent Trail and Appeal Board (PTAB) declined to institute an Inter Partes Review (IPR) because each of the asserted rejections relied on a reference that was not adequately proven to be a…
Welcome to Patent Challenges
When the America Invents Act (AIA) was passed into law in 2011, it was generally understood that the new post-issuance proceedings created by the law—Inter Partes Review (IPR), Post-Grant Review (PGR), and Covered Business Method Review (CBM)—would change the…
PTAB declines to compel deposition of declarant . . . but warns of consequences for not producing declarant for cross-examination
In Mexichem Amanco Holdings S.A. de C.V. v. Honeywell Int’l, Inc., the Patent Trial and Appeal Board (PTAB) denied a patent owner’s request for additional discovery that sought the deposition of a declarant whose testimony was relied on by…
Quality over quantity: PTAB exercises discretion to deny IPR petition for “administrative efficiency”
In Zetec v. Westinghouse, the Patent Trial and Appeal Board (PTAB) denied an IPR Petition that presented “numerous grounds” of unpatentability and “underdeveloped arguments,” as attempting to evaluate such a petition “would place a significant burden on the Board…
PTAB grants early, limited request for additional discovery where requesting party brought forth evidence showing usefulness
In Arris Group, Inc. v. C-Cation Technologies, LLC, the Patent Trial and Appeal Board (PTAB) took the rare step of granting a party’s request for additional discovery. IPR2014-00746, Paper 15 (July 24, 2014).
This decision illustrates the evidentiary…
Deposition scope not limited to documents cited or discussed in declaration
In Medtronic, Inc. v. Endotach, LLC, the Patent Trial and Appeal Board (PTAB) rejected a patent owner’s attempt to limit the scope of the deposition of its witness to the documents discussed or cited in the witness’s declaration. IPR2014-00453…
No getting clever with page limits: PTAB denies IPR petition citing primarily to expert declaration
In Fidelity Nat’l Info. Serv., Inc. v. Datatreasury Corp., the Patent Trial and Appeal Board (PTAB) denied an IPR Petition that cited primarily to an expert declaration as failing to contain a “full statement of the reasons for the…