Allan Braxdale (US)

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PTAB denies Petitioner’s motion to suspend prosecution of co-pending applications

By Allan Braxdale (US) on October 28, 2016 Posted in General

In Telebrands Corp. v. Tinnus Enterprises, LLC, the Board denied Petitioner’s request for authorization to file a motion to suspend prosecution of co-pending patent applications that were continuations of the challenged patent. PGR2015-00018, Paper 62 (Aug. 29, 2016). In several decisions prior to Telebrands Corp., the Board found that the estoppel provision of 37 C.F.R. … Continue reading

PTAB denies patent owner’s motion to request a certificate of correction

By Allan Braxdale (US) on January 14, 2016 Posted in General

A patent owner who wishes to use a certificate of correction to correct an alleged defect in a patent subject to a pending IPR must first obtain authorization from the PTAB before a request for certificate of correction can be filed. 37 CFR § 1.323. In Kingston Tech. Co., Inc. v. CATR Co., LTD., the … Continue reading

PTAB rules that standing for CBM proceeding must only exist at the time a petition is filed

By Allan Braxdale (US) on November 13, 2015 Posted in General

In Westlake Services, LLC v. Credit Acceptance Corp., the PTAB denied a Patent Owner’s request for authorization to file a motion to terminate. IPR2014-00176, Paper 41 (Sept. 3, 2015). In so ruling, the Board made it clear that standing for a CBM proceedings must only exist at the time a petition is filed. During a … Continue reading

Federal Circuit confirms that statutory bar defense to AIA proceedings is not subject to waiver

By Allan Braxdale (US) on July 31, 2015 Posted in Federal Circuit, Institution decisions

In GTNX, Inc., v. Inttra, Inc., — F.3d —, 2015 WL 3692319 (Fed. Cir. June 16, 2015), the Federal Circuit held that a Patent Owner’s failure to invoke the statutory bar set forth in 35 U.S.C. § 325(a)(1) prior to an institution decision by the Board does not constitute a waiver, and the Court reiterated that … Continue reading

PTAB confirms that it lacks authority to stay prosecution of related applications

By Allan Braxdale (US) on June 7, 2015 Posted in General

In Chums, Inc. and Croakies, Inc. v. Cablz, Inc., the PTAB denied Petitioner’s request to file a motion to suspend prosecution of patent applications that were related to the patent that was the subject of the IPR proceeding. IPR 2014-01240, Paper 22 (May 8, 2015). Petitioner “requested permission to file a motion to suspend prosecution … Continue reading

Rule changes for AIA trials are here, with more on the way

By Allan Braxdale (US) on April 1, 2015 Posted in General

The USPTO recently announced changes to the rules for trials before the PTAB under the AIA. The announcement, which may be found here, indicates that the changes will be implemented via a series of rule packages using a three-part roll-out plan, with the first rule package being effective as of March 27, 2015, and the … Continue reading

PTAB allows submission of video deposition testimony as part of Patent Owner Response

By Allan Braxdale (US) on March 22, 2015 Posted in Discovery

In Pacific Market Int’l v. Ignite USA, LLC, the PTAB authorized submission of six videos as exhibits along with the Patent Owner Response. IPR2014-00561, Paper 27 (Feb. 5, 2015). 37 C.F.R. § 42.53(a) states that “[u]ncompelled direct testimony must be submitted in the form of an affidavit. All other testimony, including testimony compelled under 35 … Continue reading