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“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...
Claim Construction Dispositive In Patentability Determination

Claim Construction Dispositive In Patentability Determination

by Matthew Johnson | Mar 29, 2024 | Claim Construction, Final Written Decisions, PTAB News, PTAB Trial Basics

By Sue Gerber and Matt Johnson – It goes without saying that claim construction is an important issue, but the PTAB’s recent decision in Netflix, Inc. v. DIVX, LLC, IPR2020-00558, Paper 66 (PTAB Feb. 22, 2024), shows not only that reasonable minds can differ...
PTAB Proposes Permanent MTA Pilot Program Rules

PTAB Proposes Permanent MTA Pilot Program Rules

by Matthew Johnson | Mar 22, 2024 | Amendment Practice, PTAB News

By Christian Roberts, and Daniel Sloan, and Matt Johnson – On March 4, 2024, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) regarding Motion To Amend (“MTA”)...
When Might a PTAB Rehearing Be Granted?

When Might a PTAB Rehearing Be Granted?

by Matthew Johnson | Feb 21, 2024 | PTAB News, Request for Reconsideration

By Sabrina Bellantoni and Matt Johnson – Recently, the Patent Trial and Appeals Board (“PTAB”) granted a request for rehearing of a decision that denied an institution of inter partes review and then instituted a trial on all the challenged claims on all the...
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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.