by Matthew Johnson | Dec 6, 2018 | PTAB Trial Basics
By Yang Li Ph.D. (Alex) and Matt Johnson Among the many differences from a patent litigation in a district court, the expedited nature of an inter partes review (IPR) brings with it an obligation for the petitioner to have a full-fledged legal theory of its case right...
by Matthew Johnson | Dec 5, 2018 | Trial Institution
In its April 2018 decision in SAS Institute, Inc. v. Iancu, the U.S. Supreme Court held that when conducting an inter partes review, the U.S. Patent Office must determine the patentability of each of the claims challenged by the petitioner. Jones Day partners Dave...
by Matthew Johnson | Dec 3, 2018 | 325(d) issues
By Mike Lavine and Matt Johnson On November 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several previous validity...
by Matthew Johnson | Nov 30, 2018 | Petitions
By Sue Gerber and Matt Johnson The PTAB has discretion to deny “follow-on” petitions that challenge the validity of a patent that has been previously subjected to inter partes review. See 35 U.S.C. § 314(a); Gen. Plastic Indus. Co. Ltd. v. Canon Kabushiki Kaisha,...
by Matthew Johnson | Nov 27, 2018 | Amendment Practice
By Matt Johnson On November 27th, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla presented a webinar on the PTAB’s proposed Motion to Amend pilot program. In October 2018, the Patent Office published a request for comments on motion to amend...
