Josh Miller

Josh Miller focuses his practice on trademark, trade dress, patent and copyright litigation, and post-grant proceedings. He has significant litigation experience including taking and defending depositions, analyzing infringement and validity, and drafting claim construction and summary judgment briefing. He has argued summary judgment in district court and has also been lead in multiple settlement negotiations obtaining client-favorable results.

Recent Posts

Discretionary Denial: Even the “Best” Prosecution Prior Art May Not Be Right for an IPR

Posted by Josh Miller on Feb 7, 2018

A pair of recent PTAB institution decisions highlights that petitioners should be cautious when relying on prior art that was cited during the prosecution of the challenged patent. Pursuant to 35 U.S.C. § 325(d), the PTAB has the discretion to deny institution if the petition relies on prior art or arguments that the examiner already addressed during patent prosecution. In two recent decisions that issued just one day apart and reached opposite conclusions, the PTAB provided some insight into circumstances that may lead to (or away from) a discretionary denial.

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This blog is intended to promote thought and debate on developing areas of the law. The opinions, commentary and characterizations of cases provided on this blog are not legal advice and do not represent the opinions of Wolf Greenfield or its clients.