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Third Party IPRs Sway District Court’s Prevailing Party and Costs Rulings

Third Party IPRs Sway District Court’s Prevailing Party and Costs Rulings

by John Marlott | Jan 2, 2025 | District Court, PTAB News

By Connor Scholes, Daniel Sloan, and John Marlott – Third-party IPRs can moot previously favorable decisions and leave a previously successful party to bear its own costs. On October 16, 2024, Judge Rodney Gilstrap denied the plaintiff’s Motion to be Confirmed...
Proceed With Caution When Using Wayback Machine® Prior Art

Proceed With Caution When Using Wayback Machine® Prior Art

by John Marlott | Dec 18, 2023 | Evidentiary Issues, PTAB News, PTAB Trial Basics

By John Marlott – Just because a document is archived on the Internet Archive’s Wayback Machine® does not necessarily qualify it as prior art for an IPR challenge. What is the Wayback Machine®?  The USPTO describes it this way: The Wayback Machine® is a digital...
Takeaways From Motion to Amend Pilot Program Chat

Takeaways From Motion to Amend Pilot Program Chat

by John Marlott | Jul 18, 2023 | Amendment Practice, PTAB News

By John Wright and John Marlott – The USPTO hosted a “Boardside Chat” on June 15, 2023, to discuss the Motion to Amend Pilot Program, including the recent call for public input on the PTAB’s existing claim amendment procedures and potential rule changes.  The...
Supreme Court Decides Not To Review PTAB Estoppel Issue

Supreme Court Decides Not To Review PTAB Estoppel Issue

by John Marlott | Jul 5, 2023 | Estoppel, Federal Circuit Appeal, PTAB News

By John Marlott and John Wright – The Supreme Court will not consider a challenge to the proper scope of AIA statutory estoppel, leaving the Federal Circuit’s governing interpretation in place. The Court’s June 26, 2023 order list denied the pending petition for...
USPTO Requests Comments Regarding Motion to Amend Pilot

USPTO Requests Comments Regarding Motion to Amend Pilot

by John Marlott | Jun 23, 2023 | Amendment Practice, PTAB News

By John Wright and John Marlott – The USPTO continues to seek public feedback on PTAB procedures and potential rule changes.  In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...
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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.