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Limitations Absent from a Notice of Allowability May be Material

Limitations Absent from a Notice of Allowability May be Material

by Matthew Johnson | Oct 10, 2023 | 325(d) issues, PTAB News, Trial Institution

By Daniel Sloan and Matt Johnson – On August 24, 2023, USPTO Director Kathi Vidal vacated a PTAB decision denying institution of inter partes review in Keysight Technologies, Inc. v. Centripetal Networks, Inc. and remanded the case for further proceedings....
PTAB Publishes Revised Oral Hearing Guide

PTAB Publishes Revised Oral Hearing Guide

by Matthew Johnson | Oct 6, 2023 | PTAB Trial Basics

By RJ Shea and Matt Johnson – The Patent Trial and Appeal Board (“PTAB”) recently published a revised PTAB Oral Hearing Guide (August 2023) updating prior guidance on hearings.  The revised Guide includes changes to: 1. Remote participation in PTAB Proceedings;...
Defective Service of Complaint Fails to Trigger Time Bar

Defective Service of Complaint Fails to Trigger Time Bar

by Matthew Johnson | Oct 4, 2023 | PTAB News, PTAB Trial Basics, Time Limits

By Tova Werblowsky* and Matt Johnson – Institution of an IPR is automatically barred if the “petition requesting the proceeding is filed more than 1 year after the date on which the petitioner…is served with the complaint alleging infringement of the patent.” 35...
Failure to Challenge Patent Owner’s Assertions Proves Detrimental

Failure to Challenge Patent Owner’s Assertions Proves Detrimental

by Matthew Johnson | Sep 13, 2023 | Prior Art Issues, PTAB News, Trial Institution

By Evan Tassis and Matt Johnson – The PTAB recently denied institution of inter partes review of a patent directed to determining the pitch of roofs after finding that Petitioner failed to directly challenge the sufficiency of Patent Owner’s priority assertions...
Common Inventorship And Technology Insufficient For 325(d) Denial

Common Inventorship And Technology Insufficient For 325(d) Denial

by Matthew Johnson | Sep 11, 2023 | 325(d) issues, PTAB News, Trial Institution

By Matt Johnson and Jack Graves— The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had previously...
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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.