Kevin Mosier

Kevin Mosier focuses his practice on patent litigation.

Recent Posts

The Federal Circuit Slams the Door Closed On Same-Party Joinder

Posted by Kevin Mosier on Apr 1, 2020

Kevin Mosier

The March 2019 decision from the PTAB’s Precedential Opinion Panel (“POP”) in Proppant Express Investments v. Oren Technologies held that petitioners can in some situations join issues to their pending IPRs by filing another petition, even after the one-year time bar would normally bar the petitioner from requesting IPR. But the Federal Circuit recently reversed course in Facebook v. Windy City Innovations, limiting petitioners’ options to avoid the one-year time bar.

Before Windy City, the POP’s decision in Proppant opened the door for so-called same-party joinder of new issues. The POP explained that 35 U.S.C. § 315(c) permits the PTAB to join “any person who properly files a petition” that warrants institution of an IPR. The POP found that “any person” includes the prior petitioner in an already-pending IPR. The POP also found that nothing in section 315(c) prohibits joining new issues to existing proceedings.

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Topics: Patent Owners, "Federal Circuit", POP

Indefinite, but Obvious and Anticipated? Federal Circuit Tells PTAB Certain Indefinite Claims May Be Anticipated or Obvious

Posted by Kevin Mosier on Mar 4, 2020

Kevin Mosier

Patent claims that could be indefinite have long raised tricky issues for parties in IPR.  Should petitioners challenge in IPR claims they think are indefinite? What should the PTAB do if it concludes that the claims are indefinite? The Federal Circuit’s recent decision in Samsung Electronics Co. v. Prisua Engineering Corp. provides some answers.

The key questions addressed in the case were, first, whether the PTAB may cancel claims for indefiniteness once IPR has been instituted on another grounds, such as anticipation under section 102 and obviousness under section 103. And second, whether the PTAB is strictly precluded from making anticipation and obviousness determinations on indefinite claims.

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Topics: "Federal Circuit", PTAB

The Patent Office POPs the Door Open for Same-Party Joinder

Posted by Kevin Mosier on Apr 1, 2019

Kevin Mosier

In September 2018, the Patent Office created the Precedential Opinion Panel (or “POP”) to increase transparency and predictability of proceedings before the PTAB by establishing precedent that would guide all PTAB judges. In March 2019, the POP released its first opinion, which held that the PTAB may, in limited circumstances, join both a petitioner to a proceeding in which it is already a party and join new issues to an existing proceeding.

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Topics: PTAB, POP, Precedential Opinion Panel

All or Nothing: PTAB Must Institute IPR on All Challenged Claims and Grounds, or None at All

Posted by Kevin Mosier on Jan 29, 2019

Kevin Mosier

This past year, the Supreme Court in SAS Institute v. Iancu held that once the PTAB institutes an IPR trial its subsequent final written decision must address all claims challenged in the petition. The Court explained that its holding was compelled by a plain reading of 35 U.S.C. § 318(a), which states that the PTAB must issue a final written decision on “any patent claim challenged by the petitioner.” SAS Institute did not decide, however, whether the PTAB’s final written decisions must also address all grounds raised in a petition. The Federal Circuit has subsequently provided a clearer answer.

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Topics: Patent Owners, IPR, PTAB

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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.