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Conception and Reduction to Practice Dates Matter

Conception and Reduction to Practice Dates Matter

by Matthew Johnson | Jan 2, 2024 | Prior Art Issues, PTAB News, PTAB Trial Basics

By Sabrina Bellantoni and Matt Johnson – In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by...
Statutory Disclaimer After Petition Bars Institution

Statutory Disclaimer After Petition Bars Institution

by Matthew Johnson | Dec 22, 2023 | Prior Art Issues, PTAB News, Trial Institution

By Hannah Mehrle and Matt Johnson – In IPR2023-01058, the PTAB declined to institute IPR, finding that Patent Owner had disclaimed all challenged claims under 35 U.S.C. § 243(a), in compliance with 37 C.F.R. § 1.321(a), such that there was no basis on which to...
Failure to Prove “Prior” Art Results in Denial

Failure to Prove “Prior” Art Results in Denial

by Matthew Johnson | Dec 12, 2023 | Prior Art Issues, PTAB News, PTAB Trial Basics

By Pranita Dhungana and Matt Johnson – The PTAB recently denied IPR institution in Sophos v. Open Text because the petitioner failed to show a reasonable likelihood that the asserted reference was, in fact, prior art.  IPR2023-00732, Paper 23 (November 2, 2023)....
RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

by Matthew Johnson | Nov 17, 2023 | Final Written Decisions, PTAB News, PTAB Trial Basics, Trial Institution

By Christian Roberts and Matthew Johnson – On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review...
Failure to Make Full Sotera-Stipulation Contributes to Denial

Failure to Make Full Sotera-Stipulation Contributes to Denial

by Matthew Johnson | Nov 10, 2023 | PTAB News, PTAB Trial Basics, Trial Institution

By Evan Tassis and Matt Johnson – In an increasingly rare exercise of discretion, the PTAB denied institution of inter partes review under Fintiv in Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Limited, IPR2023-00587.  The PTAB reasoned that 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.