Takeaway: Assignor estoppel is not applicable to an AIA proceeding. Thus, an assignor of a patent may challenge the validity of that patent in an AIA proceeding.
Takeaway: The statutory provision that sets forth the requirement to identify all real parties-in-interest in an IPR petition, 35 U.S.C. §312(a)(2), is not jurisdictional in nature. Failing to comply with this requirement thus does not deprive the Board of jurisdiction to hear a case.
Takeaway: A “hybrid” dismissal of a claim of infringement of a patent (dismissal with prejudice for some aspects and without prejudice for other aspects) does not reset the clock for the § 315(b) one-year time bar
Takeaway (1): In a Motion to Amend, the burden is on the patent owner to show patentable distinction over the prior art of record, where “prior art of record” refers to: (a) any material art in the prosecution history of the patent, (b) any material art of record in the current proceeding, including art asserted in grounds on which the Board did not institute review, and (c) any material art of record in any other proceeding before the Office involving the patent.
Takeaway (2): In a Motion to Amend, the burden is on the patent owner to also show patentable distinction over prior art known to the patent owner, where “prior art known to the patent owner” refers to no more than the material prior art that Patent Owner makes of record in the current proceeding pursuant to its duty of candor and good faith to the Office under 37 C.F.R. § 42.11, in light of a Motion to Amend.
Takeaway (3): In a Motion to Amend, once the patent owner has set forth a prima facie case of patentability of narrower substitute claims over the prior art of record, the burden of production shifts to Petitioner.
Takeaway: The Board applies final written decision estoppel on a claim-by-claim basis; estoppel under § 325(e) (or § 315(e)) does not apply to claims that are challenged in a petition but denied institution.