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
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
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
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
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
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
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