37 CFR 42.73 - Judgment
| Cite as | 37 CFR 42.73 |
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906 practice notes
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Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board
...amend as soon as possible. Comment 8: Several commenters suggested that the Office should rescind the patent owner estoppel provision of 37 CFR 42.73(d)(3) because the commenters believed the Rule ``precludes a patent owner from obtaining from the Office in another proceeding a patent claim......
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Click-To-Call Techs., LP v. Ingenio, Inc., 2015-1242
...WL 1906173, at *4 (P.T.A.B. Apr. 23, 2015), Paper No. 14. There was no such limitation on YP Interactive's participation in this IPR.9 37 C.F.R. § 42.73(b) provides that "[a] party may request judgment against itself at any time during a proceeding."10 At oral argument, counsel for the Dire......
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Unified Patents, LLC v. Oceana Innovations LLC, IPR2020-01463
...Paper 11 ("Inst. Dec"). We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R § 42.73. For the reasons explained below, Petitioner has shown by a preponderance of the evidence that claims 1-5 in the '678 patent are unpatentable.......
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Arthrex, Inc. v. Smith & Nephew, Inc., 2017-1239
...The disclaimer occurred before the Board issued an institution decision. The Board then entered an adverse judgment pursuant to 37 C.F.R. § 42.73(b). Arthrex appeals. Because we conclude that the Board acted within the scope of the regulation, we affirm. BACKGROUND On April 19, 2016, Smith ......
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795 cases
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Click-To-Call Techs., LP v. Ingenio, Inc., 2015-1242
...WL 1906173, at *4 (P.T.A.B. Apr. 23, 2015), Paper No. 14. There was no such limitation on YP Interactive's participation in this IPR.9 37 C.F.R. § 42.73(b) provides that "[a] party may request judgment against itself at any time during a proceeding."10 At oral argument, counsel for the Dire......
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Unified Patents, LLC v. Oceana Innovations LLC, IPR2020-01463
...Paper 11 ("Inst. Dec"). We have jurisdiction under 35 U.S.C. § 6. We issue this Final Written Decision under 35 U.S.C. § 318(a) and 37 C.F.R § 42.73. For the reasons explained below, Petitioner has shown by a preponderance of the evidence that claims 1-5 in the '678 patent are unpatentable.......
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Arthrex, Inc. v. Smith & Nephew, Inc., 2017-1239
...The disclaimer occurred before the Board issued an institution decision. The Board then entered an adverse judgment pursuant to 37 C.F.R. § 42.73(b). Arthrex appeals. Because we conclude that the Board acted within the scope of the regulation, we affirm. BACKGROUND On April 19, 2016, Smith ......
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Regents of the Univ. of Minn. v. Lsi Corp., 2018-1559
...Id. § 315(e). The patent owner is estopped from obtaining "[a] claim that is not patentably distinct from a finally refused" claim. 37 C.F.R. § 42.73(d)(3)(i).II. State Sovereign ImmunityWhile admitting that both ex parte and inter partes reexamination did not implicate sovereign immunity,1......
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95 firm's commentaries
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Intellectual Property Law Year in Review - March 2019
...the petition. The disclaimer occurred before the PTAB issued an institution decision. The PTAB then entered an adverse judgment citing 37 CFR § 42.73(b). Arthrex appealed. The Federal Circuit panel majority agreed that the PTAB acted within the scope of the regulation. While the rule define......
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2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit
...before the Board has entered a decision on institution.” When the Board entered an adverse judgment, an estoppel effect attached, as 37 C.F.R. § 42.73(d)(3)(i) precludes a patent owner “from taking action inconsistent with the adverse judgment, including in any patent . . . [a] claim that i......
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Intellectual Property Newsletter - January 2018
...– 37 C.F.R. § 42.108, Case No. IPR2014-00216, Paper No. 12 (P.T.A.B. June 10, 2014). 10 Final Written Decision – 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, Case No. IPR2014-00216, Paper No. 53 (P.T.A.B. May 1, 2015). 11 Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, 639 F. App’......
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The Constitutionality Of Inter Partes Review: Considering The Outcomes Of The Supreme Court's Oil States Decision
...- 37 C.F.R. § 42.108, Case No. IPR2014-00216, Paper No. 12 (P.T.A.B. June 10, 2014). 10 Final Written Decision - 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, Case No. IPR2014-00216, Paper No. 53 (P.T.A.B. May 1, 11 Oil States Energy Servs., LLC v. Greene's Energy Group, LLC, 639 F. App'x 639 (......
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10 books & journal articles
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Practical Considerations: Building Patent Trials into Your Litigation Strategy
...without engaging in an adversarial proceeding and being subject to discovery. 76. 35 U.S.C. § 328(a). 77. 35 U.S.C. § 325(e)(1); 37 C.F.R. § 42.73(d)(1). 78. 35 U.S.C. § 325(e); 37 C.F.R. § 1.510; MPEP § 2212. 79. America Invents Act, Pub. L. No. 112-29, § 18(a)(1)(D). 80. 37 C.F.R. § 42.73......
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Tax Basics of Intellectual Property
...(IPR) Arthrex, Inc. v. Smith & Nephew, Inc. , 880 F.3d 1345, 125 U.S.P.Q.2d 1532 (Fed. Cir. 2018). The Federal Circuit held that 37 C.F.R. § 42.73(c) permits the PTAB to enter an adverse judgment when a patent owner cancels all claims in an IPR petition, even if the PTAB has not yet iss......
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PTAB Trial Practice
...R. App. P. 28.1(a). 533. 35 U.S.C. §§ 315(e)(1), 325(e)(1); Leahy‑Smith America Invents Act, Pub. L. No. 112–29, 125 Stat. 284 (2011); 37 C.F.R. § 42.73(d)(1). 534. 37 C.F.R. § 42.73(d)(1). 535. Id. § ame5571_03_ch03_029-094.indd 87 9/30/16 2:31 PM 88 addressed in a inal written decision, e......
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Practical Tools
...indistinct from those claims that were lost and claim amend‑ ments that were presented and denied. ❖ (Patent Owner’s Motions to Amend) 8—37 CFR 42.73(d)(3) does not expressly preclude a patent owner from obtaining, in another pro‑ ceeding, all patent claims that could have been iled in resp......
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