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USPTO Issues Notice of Proposed Rulemaking On Discretionary Denial, Serial and Parallel Petitions, and Settlement

USPTO Issues Notice of Proposed Rulemaking On Discretionary Denial, Serial and Parallel Petitions, and Settlement

by Matthew Johnson | May 2, 2024 | PTAB News, PTAB Trial Basics, Trial Institution

By Matthew Johnson, Carl Kukkonen, Evan C. Jones, and Daniel Sloan – On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues.  The Notice addresses stakeholder...
PTAB Announces Rules Formalizing Director Review

PTAB Announces Rules Formalizing Director Review

by Matthew Johnson | Apr 26, 2024 | PTAB News, PTAB Trial Basics, Request for Reconsideration

By: Lisa Furby, Marlee Hartenstein, Stephanie M. Mishaga and Robby Breetz – In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review (discussed here).  The PTO has now issued a Notice of Proposed...
Common Ownership Exception Leads to Petition Denial

Common Ownership Exception Leads to Petition Denial

by Matthew Johnson | Apr 25, 2024 | Prior Art Issues, PTAB News, PTAB Trial Basics

By Jack Graves and Matt Johnson – The PTAB recently denied Trend Micro, Inc.’s (Petitioner) inter partes review petition against Open Text, Inc. and Webroot, Inc. (Patent Owners) challenging all claims of U.S. Pat. No. 8,201,243. Trend Micro, Inc. v. Open Text,...
“Known” Claim Elements Alone Insufficient for Motivation to Combine

“Known” Claim Elements Alone Insufficient for Motivation to Combine

by Matthew Johnson | Apr 19, 2024 | Federal Circuit Appeal, Prior Art Issues, PTAB News, PTAB Trial Basics

By Phil Shelton, Sue Gerber, and Matt Johnson – In a precedential opinion, the Federal Circuit reversed a Patent Trial and Appeal Board (“PTAB”) decision in holding that certain claims of the Virtek patent (U.S. Patent No. 10,052,734) were unpatentable as...
PTAB Terminates Institution in Netflix v. ???

PTAB Terminates Institution in Netflix v. ???

by Matthew Johnson | Apr 2, 2024 | District Court, PTAB News

By Daniel Sloan and Matt Johnson – The Patent Trial and Appeal Board (PTAB) recently dismissed and terminated inter partes review challenging claims of U.S. Patent No. 8,495,167 (“the ’167 patent”).  Netflix, Inc. v. Owner, IPR2022-01568, Paper 29 (PTAB March...
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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.