PTAB Newsletter

In this issue:

• Q&A with Arnold & Porter PTAB Practitioner Patrick Reidy
• Q&A with Arnold & Porter PTAB Practitioner Michael Sebba
• Advance Notice of Proposed Rulemaking
• Notable Board Decision
  • Board Grants Discovery of ITC Documents. Apple v. Masimo, IPR2022-01291, Paper 23 (March 17, 2023)
• Recent Director Review Decisions
  • Erroneous § 325(d) Denial Based on Determination That Substantially the Same Prior Art Was Previously Presented. Wolfspeed, Inc. v. Trustees of Purdue Univ., IPR2022-00761, Paper 13 (March 30, 2023)
  • Petitioner Could Not Have Foreseen § 325(d) Issue Based on European Counterpart Where Neither Asserted Art Nor European Counterpart Referenced One Another. Google LLC v. Valtrus Innovations Ltd., IPR2022-01197, Paper 12 (March 29, 2023)
• Recent Federal Circuit Decisions Related to PTAB
  • Federal Circuit Precedential Decision: Director’s Procedural Instructions Regarding Discretionary Denial of Institution Based on Parallel District Court Litigation, Are Not Committed to Agency Discretion by Law. Apple Inc. v. Vidal, No. 2022-1249 (Fed. Cir. Mar. 13, 2023)
  • Federal Circuit Precedential Decision: Patentee Has the Burden of Proving that Invalidity Grounds Not Raised in a Petition for Inter Partes Review Could Reasonably Have Been Raised. Ironburg Inventions Ltd. v. Valve Corp., No. 2021-2296 (Fed. Cir. Apr. 3, 2023)
• Upcoming Events and Speaking Engagements

* Drew Needham contributed to this newsletter. Mr. Needham is a graduate of the University of Maryland School of Law and is employed at Arnold & Porter's Washington, DC office. Mr. Needham is admitted only in Maryland. He is not admitted to the practice of law in the District of Columbia.

© Arnold & Porter Kaye Scholer LLP 2023 All Rights Reserved. This newsletter is intended to be a general summary of the law and does not constitute legal advice. You should consult with counsel to determine applicable legal requirements in a specific fact situation.