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PTAB Bar Association Law Journal – Discretionary Denials of IPR Institution

PTAB Bar Association Law Journal – Discretionary Denials of IPR Institution

by David Maiorana | Feb 3, 2020 | Trial Institution

By Jasper Tran, Matthew Chung, Dave Maiorana, and Matt Johnson – On September 12, 2018, the PTAB in NHK Spring Co. v. Intri-Plex Techs., Inc. exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an IPR, despite the petition’s timely filing,...
Motion to Amend Available Only For Challenged Claims

Motion to Amend Available Only For Challenged Claims

by David Maiorana | Jan 8, 2020 | Amendment Practice

By Robby Breetz and Dave Maiorana In Apple v. Uniloc 2017 LLC, [1] the patent owner moved to amend the claims contingent on an unpatentability finding by the Board.  The contingent amendment cancelled the original claims and replaced them with a new claim set.  The...
PTAB Declines Institution After Discovery of Unnamed Real Party in Interest

PTAB Declines Institution After Discovery of Unnamed Real Party in Interest

by David Maiorana | Nov 7, 2019 | Real Party in Interest, Trial Institution

By Robby Breetz and Dave Maiorana To institute an inter partes review (IPR), the petition requesting the proceeding must be filed within one year of the petitioner or real party in interest (RPI) receiving a complaint alleging patent infringement.  35 U.S.C. §...
Federal Court Relies on PTAB Findings in Denying Section 101 Summary Judgment Motion

Federal Court Relies on PTAB Findings in Denying Section 101 Summary Judgment Motion

by David Maiorana | Sep 3, 2019 | Patent Eligible Subject Matter

By Olivia Pedersen and Dave Maiorana Despite the prohibition on patenting “abstract ideas” and the tendency of computer software claims to fall into that category, claims directed at improving faulty software systems may still be patentable if they...
States Cannot Claim Sovereign Immunity to Shield Their Patents From IPR

States Cannot Claim Sovereign Immunity to Shield Their Patents From IPR

by David Maiorana | Jul 1, 2019 | PTAB News

By Bobby Karl* and Dave Maiorana In a precedential decision, issued June 14, 2019, the Federal Circuit affirmed the PTAB’s ruling against the University of Minnesota, declining to dismiss petitions for inter partes review (“IPR”).  The court rejected the university’s...
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