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Inventor Testimony of Reduction Date Leads to Denial

Inventor Testimony of Reduction Date Leads to Denial

by Matthew Johnson | Jul 28, 2025 | Prior Art Issues, PTAB News

By Jessie Hess*, Christian Roberts, and Matthew Johnson – The Patent Trial and Appeal Board (PTAB) denied institution of an inter partes review (IPR) brought by Par-Kan Company, LLC against Unverferth Manufacturing Company regarding U.S. Patent No. 8,967,940...
“Settled-Expectations” Analysis May Leave Some Petitioners Feeling Unsettled

“Settled-Expectations” Analysis May Leave Some Petitioners Feeling Unsettled

by Matthew Johnson | Jul 23, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Sue Gerber and Matt Johnson – As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the PTAB...
Discretionary Denial Where Inventors Petitioned for Unpatentability

Discretionary Denial Where Inventors Petitioned for Unpatentability

by Matthew Johnson | Jul 18, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Hannah Mehrle and Matt Johnson – Coke Morgan Stewart, the acting director of the United States Patent and Trademark Office (“USPTO”), exercised discretion under 35 U.S.C. § 314(a) to deny Tessell’s (“Petitioner’s”) petition in favor of Nutanix (“Patent...
Discretionary Denial of IPR Institution Due to Advanced Hatch-Waxman Litigation

Discretionary Denial of IPR Institution Due to Advanced Hatch-Waxman Litigation

by Matthew Johnson | Jul 16, 2025 | Pharmaceutical, PTAB News, PTAB Trial Basics, Trial Institution

By Nicole Prescott,* Phillip Shelton, and Matt Johnson – In a recent decision, the Patent Trial and Appeals Board (“PTAB”) exercised its discretion under 35 U.S.C. § 314(a) to deny institution of an inter partes review (“IPR”) after applying the Fintiv factors,...
Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

Delegated Rehearing Panel Sends Lifeline to Mercedes-Benz

by Matthew Johnson | Jun 27, 2025 | Final Written Decisions, PTAB News, Request for Reconsideration

By Ned LaDuca,* Matt Modderman, Matt Johnson – A Delegated Rehearing Panel (“DRP”) recently modified the PTAB’s construction of the claim term “workload” and remanded, giving Mercedes-Benz USA, LLC (“Petitioner”) another opportunity to challenge a processor...
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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.