AVX Corp. (“AVX”) filed a Petition for Inter Partes Review challenging all claims of U.S. 6,661,639 owned by Presidio Components, Inc. (Presidio). The Board found claims 13-16 and 18 unpatentable and affirmed the patentability of all other claims. AVX appealed the Board’s findings as to patentability. The Federal Circuit found that AVX lacked Article III […]
Yesterday the PTAB designated as precedential two decisions related to the standard for denying institution under 35 U.S.C. §§ 314(a) and 325(d). The first decision rested primarily on § 325(d) but also considered some of the General Plastics factors under § 314(a). NHK Spring Co., LTD. v. Intri-Plex, Inc., IPR2018-00752, Paper 8 (Sept. 12, 2018). The […]
On October 29, 2018, the US Patent & Trademark Office (USPTO or Office) issued a Notice requesting comments on proposed modifications to motion to amend (MTA) practice. The Office received a number of comments and questions concerning the interplay between reexamination and reissue proceedings during a co-pending AIA trial (inter partes review (IPR), post grant […]
Summary The PTAB recently published its first-ever final written decision in a derivation proceeding, which allows a patent to be challenged as being derived from the true inventor. The decision found no derivation, and touched on several issues: The Board applied the preponderance of the evidence standard, now used for PTAB trials. The Board identified […]
The Patent Trial and Appeal Board (PTAB) has been busy, designating three decisions as precedential on Monday after designating two decisions as precedential earlier this month. Two of the decisions involve the substantive and procedural limitations of testimony during oral argument. The third decision addresses which invalidity grounds may be raised in challenging motions to […]
The US Patent and Trademark Office (USPTO) implemented a new pilot program on March 15, 2019 concerning motion-to-amend practice in America Invents Act (AIA) trials, including post-grant review (PGR), inter partes review (IPR), and covered business method review (CBM) proceedings before the Patent Trial and Appeal Board (the Board). Traditionally, a Patent Owner has been […]
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