Despite lack of evidence regarding a library’s cataloguing and indexing practices in 1994, the Board deemed a thesis self-authenticating as an ancient document under FRE 901(b)(8). The Board also noted that the “document was found in a place of natural custody and is the type of document that falls within the policy of the rule.” […]
The Board exercised its discretion under Section 314(a) to deny institution of a second parallel petition that presented a priority date dispute not presented in the first petition. The Board made clear that presenting an alternative argument in a second petition does not warrant filing parallel petitions: “Simply saying that the petitions present alternative arguments […]
Section 325(d) provides the PTAB with the discretion to deny institution if “the same or substantially the same prior art or arguments previously were presented to the Office.” To provide further clarity on this issue, the PTAB designated two decisions as precedential and one as informative. In Advanced Bionics v. MED-EL Elektromedizinische Gerate GmbH (precedential), the PTAB […]
On December 20, 2019, in a precedential decision, the Patent Trial and Appeal Board has determined that conventional indicia of publication, such as copyright dates from a well-known textbook from an established publisher, can be sufficient to establish printed publication status at the institution stage of an inter partes review. Although the Board did not […]
In Arthrex v. Smith & Nephew, a three-judge panel of the Federal Circuit found that the appointment of PTAB judges violates the Appointments Clause of the Constitution because they are principal officers that were not appointed by the President with the advice and consent of the Senate. The Appointments Clause of Article II provides: [The […]
This week the PTAB rejected a Patent Owner’s request that the Board deny institution of inter partes review where the relied upon prior art was cited on the face of the challenged patent. Patent Owners routinely ask the Board to exercise its discretion under 35 U.S.C. Sections 314(a) and 325(d) to deny institution. In Adobe […]
The PTAB recently designated as precedential an order clarifying when counsel may confer with a witness during a deposition. The Testimony Guidelines state: Once the cross-examination of a witness has commenced, and until cross-examination of the witness has concluded, counsel offering the witness on direct examination shall not: (a) consult or confer with the witness […]
In January, the Federal Circuit decided AC Technologies S.A. v. Amazon.com, Inc., et al., which held that the PTAB does not exceed its statutory authority when it renders a decision on grounds presented in an IPR petition but not instituted, as long as the PTAB complies with due process. The Federal Circuit looked to the […]
Last year, the Federal Circuit decided two cases that held that a dismissed complaint will not toll the Section 315(b) one-year bar. In particular, neither a voluntary dismissal (Click-to-Call Techs., LP v. Ingenio, Inc.) nor an involuntary dismissal (Bennett Regulator Guards v. Atlanta Gas Light) will toll the application of the one-year time bar because the “statute endorses no […]
Starting November 13, 2018, the PTAB will begin to apply the federal district court claim construction standard to all newly-filed AIA trial proceedings (IPRs, PGRs, and CBMs), rather than the broadest reasonable interpretation (BRI) standard currently used in proceedings that involve unexpired patents. The USPTO will continue to apply the BRI standard for unexpired patents […]