Klarquist News & Insights

PTAB / Printed Publications

Board finds thesis is self-authenticating as an ancient document

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.” […]

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PTAB / Board Discretion

Discretionary denial of second petition that presented a priority date dispute not in the first petition

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 […]

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PTAB / Board Discretion

Two new PTAB precedential decisions address discretionary denials for raising the same art or 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 […]

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PTAB / Printed Publications

PTAB clarifies evidentiary requirements for printed publications in precedential opinion

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 […]

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PTAB / Constitutional Challenges / Federal Circuit

Appointments of PTAB judges violate constitution

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 […]

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PTAB / Board Discretion

PTAB institutes review on previously-cited prior art

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 […]

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PTAB / Board Discretion / Discovery

PTAB deposition rules permit conferring with a witness after cross-examination

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 […]

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PTAB

One-year time bar does not apply to suits filed by parties that do not own the patent

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 […]

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