PTAB / Board Discretion
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
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 / Board Discretion
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
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 / Board Discretion
In IPR2018-00347, the Board exercised its discretion and denied institution of Honda’s petition against U.S. Patent No. 7,154,200, assigned to Intellectual Ventures. The Board applied the seven, non-exhaustive factors set out in General Plastics (IPR2016-01357; PTAB May 4, 2016) and was ultimately “swayed” by the 1st and 3rd factors, finding that Honda “chose to file two […]
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