Firm Insights
Next-Day Delivery Found to Constitute Sufficient Service of a CBM Petition
Unless the parties agree otherwise, service of a CBM petition may be by USPS Priority Mail Express or “by means at least as fast and reliable” as Priority Mail Express. 37 C.F.R. § 42.205(b). Other AIA Trial rules regarding the service of documents apply the same standard.
Federal Circuit Upholds PTAB’s Validity Finding Based On Arguments the Patent Owner Did Not Raise
The Federal Circuit held in FanDuel, Inc. v. Interactive Games LLC that the PTAB did not violate the Administrative Procedure Act when it found that the Petitioner failed to prove a claim obvious based on arguments the Patent Owner had not previously raised.
IPR Instituted on Art Considered During Examination After Finding the Examiner Misunderstood the Reference
Under 35 U.S.C. § 325(d), the Board has the discretion to deny an IPR petition if “the same or substantially the same prior art or arguments” were presented during prosecution or in another proceeding. As discussed in an earlier post, the Board may weigh several factors when determining whether to exercise its discretion and deny an IPR petition under § 325(d).