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PTAB Designates Precedential Decision Relating to Infringer’s Civil Action Barring IPR

PTAB Designates Precedential Decision Relating to Infringer’s Civil Action Barring IPR

by Geoffrey Gavin | Sep 12, 2019 | PTAB Trial Basics, Standing

By Geoffrey Gavin and Matt Johnson The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the patent.  See...
Federal Circuit Grants Rehearing and Remands IPR to PTAB post-SAS

Federal Circuit Grants Rehearing and Remands IPR to PTAB post-SAS

by Geoffrey Gavin | Jun 24, 2018 | Federal Circuit

By: Geoffrey K. Gavin Last week, the Federal Circuit granted, in part, a panel rehearing request and remanded an IPR to the PTAB in view of SAS to address claims that were not initially instituted by the Board. Broad Ocean Tech., LLC v. Nidec Motor Corp., No....
PTAB Denies Request to Submit Supplemental Information on Skill Level of POSITA

PTAB Denies Request to Submit Supplemental Information on Skill Level of POSITA

by Geoffrey Gavin | Jan 26, 2018 | Evidentiary Issues, Motions Practice, PTAB Trial Basics

By Geoffrey Gavin In a recent decision, the PTAB denied a petitioner’s request for authorization to file a motion to submit supplemental information directed to the level of ordinary skill in the art.  Ooma, Inc. v. Deep Green Wireless LLC, IPR2017-01541, Paper 14...
PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art

PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art

by Geoffrey Gavin | Dec 21, 2017 | 325(d) issues, Trial Institution

By Geoffrey Gavin In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 325(d) to deny institution of an IPR petition that presented the same prior art before the Patent Office in a pending reexamination.  Fox Factory, Inc. v. SRAM, LLC,...
Petitioners Must Explain Combining Multiple Embodiments of Reference in Obviousness Argument

Petitioners Must Explain Combining Multiple Embodiments of Reference in Obviousness Argument

by Geoffrey Gavin | Nov 3, 2017 | PTAB Trial Basics

By Geoffrey Gavin In a series of recent decisions, the PTAB denied institution on a dozen petitions on related patents because of one problem it identified in the petitioner’s arguments.  All of the petitioner’s proposed grounds challenged the patents under § 103, and...
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The opinions expressed are those of the authors and do not necessarily reflect the views of Jones Day or its clients. The posts and information provided are for general information purposes and are not intended to be and should not be taken as legal advice.