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FedEx Delivery Sufficiently Akin to Priority Mail Express for Petition Service

FedEx Delivery Sufficiently Akin to Priority Mail Express for Petition Service

by Matthew Johnson | Apr 7, 2021 | CBMs, Time Limits

By Hannah Mehrle and Matt Johnson – A PTAB panel found FedEx sufficiently akin to Priority Mail Express to meet the petition service rule, and to the extent necessary further waived the regulatory requirements related to the timing of Petitioner’s (TIZ Inc....
PTAB Provides Notice Of Sua Sponte Motion to Amend Ground

PTAB Provides Notice Of Sua Sponte Motion to Amend Ground

by Matthew Johnson | Mar 28, 2021 | Amendment Practice

By Sarah Brickey and Matt Johnson – The precedential ruling in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020) allows the Patent Trial and Appeals Board (PTAB) to raise an issue regarding substitute claims that was...
JONES DAY TALKS®: Patent Litigation, PTAB, Iancu’s Legacy, and Institution Discretion

JONES DAY TALKS®: Patent Litigation, PTAB, Iancu’s Legacy, and Institution Discretion

by Matthew Johnson | Mar 25, 2021 | PTAB News, Trial Institution

Partners Matt Johnson and Sarah Geers talk about former USPTO Director Andrei Iancu’s impact on the PTAB, and what we might expect from a new director under the Biden Administration. They also comment on why patent litigation filings remained active during...
Creative COVID-Time Deposition Procedure

Creative COVID-Time Deposition Procedure

by Matthew Johnson | Mar 23, 2021 | Discovery, PTAB News

By Alex Li and Matt Johnson – Depositions for proceedings before the Patent Trial and Appeal Board (PTAB) are usually taken in the U.S.  See 37 C.F.R. § 42.53(b)(2), (b)(3).  Furthermore, many foreign jurisdictions have restrictions on taking depositions within...
District Court Indefiniteness Ruling Leads to Denial

District Court Indefiniteness Ruling Leads to Denial

by Matthew Johnson | Mar 19, 2021 | PTAB Trial Basics, Trial Institution

By Sachin Patel and Matt Johnson – The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite. On June...
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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.