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PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings

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By Sonia Okolie and Craig Kronenthal So, what’s new at the PTAB? Technicalities for termination, expert declaration length, requests for rehearing, and more! A joint request takes two. Tesla, Inc. v. Unicorn Energy GmbH, IPR2022-00110, Paper 19 (February 17, 2022) (McMillin, joined by Jurgovan and Khan) (finding that no joint request to terminate was made…

Banner Witcoff’s Shambhavi Patel Recognized in 2021 Top 50 Women in PTAB Trials List

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Banner Witcoff’s Shambhavi Patel was recognized in the 2021 Top 50 Women in PTAB Trials list. Shambhavi focuses her practice on a variety of intellectual property matters, including patent prosecution, post-grant proceedings, and patent litigation. She’s been with the firm for eight years. This is the second Top 50 Women in PTAB Trials list the PTAB…

WTR 1000 Recognizes Banner Witcoff’s Trademark Practice, Three Attorneys

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Banner Witcoff is ranked as a top trademark firm in Illinois in the 2022 edition of World Trademark Review 1000 – The World’s Leading Trademark Professionals. In addition to the firm-wide ranking, the guide recognized three Banner Witcoff attorneys: Anna King, Katie Laatsch Fink, and Richard Stockton— as leading practitioners for trademark prosecution and strategy.…

Christopher L. McKee Offers Expert Analysis for Law360 on the Reach of IPR Estoppel in view of the Federal Circuit Caltech Ruling

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Click here to read, “Gauging IPR Estoppel’s Reach After Fed. Circ. Caltech Ruling.” Update: On February 22, 2022, the Federal Circuit issued a correction (“Errata”) to its decision in Caltech.  The language suggesting that IPR estoppel extends to non-petitioned claims was deleted.  It was clarified that IPR estoppel extends to “all grounds not stated in…

PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings

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By John Curry and Craig Kronenthal So, what’s new at the PTAB? Expert qualifications, proving reduction to practice, and denial of a motion to withdraw, and more! General Relativity: Lack of experience in narrowly defined subject matter is not a reason to exclude an expert when the expert has general expertise in the area. Unified…

Banner Witcoff Ranked First on Juristat’s Top Firms for Design Patents

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Banner Witcoff was ranked No. 1 on Juristat’s list of Top Firms for Design Patents. According to Juristat, firms were evaluated on three key metrics: The number of design patent applications filed, The allowance rate, and The average number of office actions before allowance. Juristat awarded Banner Witcoff the top design firm ranking.  The analysis…

PTAB Highlights | Takeaways from Recent Decisions in Post-Issuance Proceedings

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By Scott Burow and Alaina Pak What’s new at the PTAB? The effects of transferring parallel litigation, impacts of Patent Owner delays on Fintiv analysis, standing issues, and more! A new court, a new trial schedule, no Board discretion? Google LLC v. Ikorongo Technology LLC et al., IPR2021-00205, (Paper 16) (January 25, 2022) (Moore, joined…
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