In the Riverbed Tech., Inc. v. Silver Peak Sys., Inc. cases, the PTAB was presented with motions to amend the claims of the patents at issue. The PTAB, in granting the motions in part, discussed its rationale and provided guidance
NRF Digital Team
CAFC denies appeals of institution and non-institution decisions
By NRF Digital Team on
In three recent decisions, the CAFC addressed whether the PTAB’s decision to institute an IPR is appealable.
For an IPR petition to be instituted, it must show a reasonable likelihood that the petitioner would prevail with respect to at least…
Norton Rose Fulbright’s free IPR webinar series begins on January 22
By NRF Digital Team on
All readers of Patent Challenges are invited to attend our firm’s free IPR webinar series that begins on January 22nd and will continue throughout 2015. This is sure to be an informative series for anyone looking to learn more…
Board authorizes motion to dismiss following institution
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In GTNX, INC. v. INTTRA, INC., the PTAB allowed the Patent Owner to file a motion to dismiss several instituted covered business method (CBM) reviews, despite the fact that the ground for dismissal was not raised in the Patent…
PTAB interprets the scope of the declaratory judgment bar for IPR petitions
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In Ariosa Diagnostics v. Isis Innovation Limited, the PTAB ruled that filing a civil action for declaratory judgment of noninfringement and asserting an affirmative defense of invalidity do not bar a party from later filing an IPR petition. IPR2012-00022…
Deadline for submitting comments to USPTO on AIA trials is this Thursday
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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…
Welcome to Patent Challenges
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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
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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…
Deposition scope not limited to documents cited or discussed in declaration
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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…