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April 2025 Institution Rate Slips Below 45 Percent

April 2025 Institution Rate Slips Below 45 Percent

by Matthew Johnson | Jun 6, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Matt Johnson – The PTAB has published its monthly statistics wrap up for April 2025.  As expected, those statistics show a significant decline in the institution rate compared to the first six months of the fiscal year.  In those first six months, the overall...
Acting Director Releases First Decisions Under New Bifurcated Process

Acting Director Releases First Decisions Under New Bifurcated Process

by Matthew Johnson | Jun 3, 2025 | PTAB News, Time Limits, Trial Institution

By Daniel C. Sloan and Matt Johnson – On May 16, 2025, USPTO Acting Director Coke Morgan Stewart released the first four discretionary denial decisions under the PTAB’s new process.  Under the new process, the parties separately brief discretionary denial issues...
Director Review:  PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

Director Review: PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

by Matthew Johnson | May 23, 2025 | Discovery, PTAB News, PTAB Trial Basics, Time Limits

By Daniel Sloan and Matt Johnson – USPTO Acting Director Coke Morgan Stewart recently vacated and remanded three Final Written Decisions from the PTAB.  Semiconductor Components Indus. v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 94...
Estoppel Trumps Substance:  ITC Bars Respondent’s Invalidity Grounds Raised in IPR

Estoppel Trumps Substance: ITC Bars Respondent’s Invalidity Grounds Raised in IPR

by Matthew Johnson | May 21, 2025 | Estoppel, PTAB News, PTAB Trial Basics

By Evan Tassis and Matt Johnson – Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...
Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds

Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds

by Matthew Johnson | May 15, 2025 | Estoppel, Prior Art Issues, PTAB News, PTAB Trial Basics

By Omar Jishi and Matt Johnson – In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid on...
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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.