Jones Day's PTAB Litigation Blog, Home page
PTAB Declines to Exercise Discretion Post-Markman

PTAB Declines to Exercise Discretion Post-Markman

By Hannah Mehrle and Matt Johnson - Petitioner (Apple, Inc.) filed a petition to institute inter partes on a patent owned by Koss Corporation (Patent Owner).  The PTAB considered six factors from Fintiv to assess whether to exercise authority to deny institution under...

read more
Awkwardly Divided Petitions Triggers § 314(a) Denials

Awkwardly Divided Petitions Triggers § 314(a) Denials

By Ashvi Patel,* Marlee Hartenstein, and Matt Johnson In Fantasia Trading LLC v. Cognipower LLC, IPR2021-00070, Paper 21 (May 20, 2021), the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) where Petitioner Fantasia Trading LLC...

read more
PGRs Still Rare – Is Estoppel The Reason?

PGRs Still Rare – Is Estoppel The Reason?

By John Marlott - A Post-Grant Review can be used to challenge newly-issued patents on wide-ranging grounds, but PGRs remain relatively unpopular: statutory estoppel may be a reason why. The America Invents Act (“AIA”) created new procedures for challenging the...

read more
Final Written Decision Not Enough For Assertion Of Amended Claims

Final Written Decision Not Enough For Assertion Of Amended Claims

By Sarah Geers - Claims added or amended during inter partes review (“IPR”) do not become part of a patent until the Patent Office officially says so by issuing an IPR certificate under 35 U.S.C. § 318(b).  The patentee needs more than a Final Written Decision (“FWD”)...

read more

About this blog

Follow us on Twitter

Archives