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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...
Federal Circuit Affirms Claim Construction and How It Applies

Federal Circuit Affirms Claim Construction and How It Applies

by Matthew Johnson | Feb 8, 2024 | Claim Construction, Federal Circuit, PTAB News

By Luke Cipolla, Matt Silveira, and Matt Johnson – In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that...
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)....
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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.