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NEWS: USPTO Issues Updates To PTAB Trial Practice Guide

NEWS: USPTO Issues Updates To PTAB Trial Practice Guide

by Matthew Johnson | Jul 16, 2019 | PTAB News

The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in August 2012, concurrent with the promulgation of the AIA Trial Rules. A first...
SDNY Rules Forum Selection Clause Does Not Bar IPR

SDNY Rules Forum Selection Clause Does Not Bar IPR

by Matthew Johnson | Jul 10, 2019 | PTAB News

By Alex Li and Matt Johnson On July 2, 2019, Judge Cote of the Southern District of New York issued an opinion that denied a motion for a preliminary injunction ordering the defendant to withdraw its petitions for inter parties review (“IPR”) at the Patent Trial and...
Mere Similarity Between References is Insufficient Rationale for Obviousness

Mere Similarity Between References is Insufficient Rationale for Obviousness

by Matthew Johnson | Jul 8, 2019 | Prior Art Issues

By Grant Hebrank,* Josh Nightingale, and Matt Johnson On May 8, 2019, the Patent Trial and Appeal Board denied institution of inter partes review in William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, holding that the mere fact that prior art...
Post-Filing, Pre-Institution Merger Time-Bars Inter Partes Review

Post-Filing, Pre-Institution Merger Time-Bars Inter Partes Review

by Matthew Johnson | Jun 28, 2019 | Real Party in Interest

By Jihong Lou and Matt Johnson In Power Integrations v. Semiconductor Components, the Federal Circuit ruled that privy and real-party-in-interest (RPI) relationships arising after a petition is filed but before institution may bar institution under section 315(b).  In...
Court Blocks Stay Request Absent Agreement to Estoppel for Third-Party IPRs

Court Blocks Stay Request Absent Agreement to Estoppel for Third-Party IPRs

by Matthew Johnson | Jun 20, 2019 | Stay

By Jen Bachorik and Matt Johnson The United States District Court for the Central District of California recently denied Defendant Adobe Systems Inc.’s motion to stay litigation pending resolution of parallel inter partes review (“IPR”) proceedings before the PTAB...
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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.