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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...
Secondary Considerations Unhelpful Second Time Around

Secondary Considerations Unhelpful Second Time Around

by Matthew Johnson | Mar 11, 2021 | Other News

By Zach Sharb and Matt Johnson – On February 26, 2021, the PTAB found in favor of Fox Factory, Inc. (“Fox”) on remand and cancelled the challenged claims of SRAM LLC’s (“SRAM”) U.S. Patent No. 9,182,027 (the ’027 Patent), directed towards anchoring a bicycle’s...
PRECEDENTIAL: Trial Court Stay Weighs Strongly Against Fintiv Denial

PRECEDENTIAL: Trial Court Stay Weighs Strongly Against Fintiv Denial

by Matthew Johnson | Mar 5, 2021 | PTAB News, Trial Institution

By Jennifer Bachorik and Matt Johnson – The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...
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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.