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Shifting Burden Dooms Patent Owner

Shifting Burden Dooms Patent Owner

by Matthew Johnson | Jun 14, 2024 | Evidentiary Issues, Final Written Decisions, Prior Art Issues

By Hailey Stewart,* Evan Tassis and Matt Johnson – In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology,...
Director Vidal Reels In Discretionary Denials Under Section 314(a)

Director Vidal Reels In Discretionary Denials Under Section 314(a)

by Matthew Johnson | Jun 4, 2024 | Prior Art Issues, PTAB News, PTAB Trial Basics, Trial Institution

By Sue Gerber and Matt Johnson – Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review.  In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent was...
Federal Circuit Finds Application of Printed Matter Doctrine Too Expansive

Federal Circuit Finds Application of Printed Matter Doctrine Too Expansive

by Matthew Johnson | May 31, 2024 | Claim Construction, Federal Circuit Appeal, PTAB News, PTAB Trial Basics

By Chris Dorsett and Lisa Furby – During an inter partes review (IPR) initiated by Ingenico, the PTAB found certain claims from three patents held by IOEngine to be unpatentable. The patents at issue are directed to secure communications for portable devices...
USPTO Proposes Expanding Opportunities for Non-Registered Practitioners

USPTO Proposes Expanding Opportunities for Non-Registered Practitioners

by Matthew Johnson | May 30, 2024 | PTAB News, PTAB Trial Basics

By Zachary Marshall-Carter, Daniel Sloan, and Matt Johnson – The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials.  The proposal is part of the USPTO’s wider initiative to expand access to practice...
PTAB Denies IPR Petition for Failure to Construe Claims

PTAB Denies IPR Petition for Failure to Construe Claims

by Matthew Johnson | May 24, 2024 | Claim Construction, PTAB News

By Lauren Kim and Matt Johnson – The PTAB recently denied 10x Genomics, Inc.’s (Petitioner) IPR petition (IPR2023-01299) against President and Fellows of Harvard College (Patent Owner) challenging claims of U.S. Pat. No. 11,098,303. Patent Owner identified...
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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.