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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for February 4th, 2014

Discussion of PTAB Appeals to CAFC

Posted On: Feb. 4, 2014   By: Scott A. McKeown
Topics: Upcoming CLE
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IPO Chat Channel Webinar this Thursday

Just a reminder that this Thursday the IPO Chat Channel will host a webinar entitled: Appeals from the PTAB: Laying the Groundwork for the Federal Circuit. Please join me and my co-panelists Hon. Arthur Gajarsa, Wilmer Cutler Pickering Hale and Dorr, LLP and Mollybeth Kocialski, of Oracle Corporation for a discussion of this important practice development.

Lack of PTAB Discovery to Shift Privity Question to District Courts

Posted On: Feb. 4, 2014   By: Scott A. McKeown
privity PTABEvidence of Petitioner Control Critical for PTAB Privity Finding

Under 35 U.S.C. § 315(b) a petitioner, real party-in-interest, or privy of the petitioner must seek Inter Partes Review (IPR) within 12 months of service of a complaint for patent infringement. In an attempt to dodge some IPR filings as time barred, patentees are urging the USPTO Patent Trial & Appeal Board (PTAB) to adopt an expansive interpretation of privy. That is, since parties are often time embroiled in patent suits at different times, expanding the 12 month window to encompass the first filed suit could insulate many patentees from dreaded IPR challenges.

As detailed previously, in Atlanta Gas Light Company v. Bennett Regulator Guards Inc., (IPR2013-00453, Paper 31, January 22, 2014), the PTAB agreed that the existence of an indemnification agreement was probative of the opportunity for control by a supplier of a customer petitioner. However, the PTAB is seeking more than the mere existence of an agreement, but instead, hard evidence of control. Read the rest of this entry »