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PTAB Abused Discretion in Denying Request to File Motion for Additional Discovery

PTAB Abused Discretion in Denying Request to File Motion for Additional Discovery

by Matthew Johnson | Aug 6, 2019 | Discovery, Motions Practice

By Jen Bachorik and Matt Johnson In a recent appeal of two inter partes review (“IPR”) decisions from the Patent Trial and Appeal Board (“Board”), The Court of Appeals for the Federal Circuit (“CAFC”) held that the Board abused its discretion in denying VirnetX’s...
Patent Owner in Standard-Essential Patent Pool Has Standing to Appeal

Patent Owner in Standard-Essential Patent Pool Has Standing to Appeal

by Matthew Johnson | Aug 1, 2019 | Federal Circuit, Prior Art Issues, Standing

By Elizabeth Dengler,* Mike Lavine, Jihong Lou, Matthew Johnson Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding...
Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder

Trial Practice Guide Updates – Discovery, Testimony, Motions to Amend, and Joinder

by Matthew Johnson | Jul 25, 2019 | Amendment Practice, Discovery, Joinder, Motions Practice, PTAB News

By Catharina Chin Eng and Matt Johnson Our prior post on the PTAB’s second update to the AIA Trial Practice Guide (TPG), published July 15, 2019, highlighted the additional guidance provided for petitions, patent owner preliminary responses and claim construction. ...
Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

by Matthew Johnson | Jul 23, 2019 | Amendment Practice, Claim Construction, PTAB News, PTAB Trial Basics

By Catharina Chin Eng and Matt Johnson On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The original...
Timing Is Key in PTAB’s Decision to Review Follow-On Petition by Different Party

Timing Is Key in PTAB’s Decision to Review Follow-On Petition by Different Party

by Matthew Johnson | Jul 17, 2019 | PTAB News

By Cathy Chin Eng and Matt Johnson Relying on 35 U.S.C. § 314(a), the Patent Trial and Appeal Board has articulated its reluctance to review “follow-on” petitions challenging the validity of patents that have been previously subjected to inter partes review.  As...
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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.