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Expanded Panel Ratifies Post-Petition Disclaimer As Legitimate CBM Eligibility Strategy

Expanded Panel Ratifies Post-Petition Disclaimer As Legitimate CBM Eligibility Strategy

by Matthew Johnson | Oct 11, 2017 | CBMs, Standing

By Matt Johnson An expanded panel at the PTAB has found that post-Petition claim cancellation is a legitimate strategy for patent owners to avoid CBM jurisdiction. In deciding petitioner’s Institution Decision Rehearing Request in Facebook, Inc. v. Skky, LLC,...
Record Petition Filings Projected for FY 2017 – Institution Rate Continues Slide

Record Petition Filings Projected for FY 2017 – Institution Rate Continues Slide

by Matthew Johnson | Sep 17, 2017 | PTAB News

By Matt Johnson The Patent Trial and Appeal Board has released AIA trial filing and disposition numbers for July 2017.  Filings remain near the 150 mark, with 138 total trials being requested in July, 135 of those being requests for Inter Partes Review.  This is down...
Delayed Payment Proves Fatal for Cultec’s PTAB Challenge

Delayed Payment Proves Fatal for Cultec’s PTAB Challenge

by Matthew Johnson | Aug 3, 2017 | PTAB Trial Basics

By Marlee Hartenstein and Matt Johnson Under 35 U.S.C. § 315(b), a petition for inter partes review (IPR) may not be filed more than one year after the date on which the petitioner was served with a patent infringement complaint.  Thus, a petition must meet all of the...
Federal Circuit Denies Motion to Stay Pending Supreme Court Decision in Oil States

Federal Circuit Denies Motion to Stay Pending Supreme Court Decision in Oil States

by Matthew Johnson | Jun 30, 2017 | PTAB Trial Basics

By Josh Nightingale and Matt Johnson On June 12, 2017, the U.S. Supreme Court granted certiorari in Oil States Energy Servs., LLC v. Greene’s Energy Group, LLC, to decide whether inter partes review (IPR) violates the Constitution by extinguishing patent rights...
Unmet Garmin Factor 3 Proves Fatal for Additional Discovery Request

Unmet Garmin Factor 3 Proves Fatal for Additional Discovery Request

by Matthew Johnson | May 26, 2017 | Evidentiary Issues

By Emily Lamm and Matt Johnson In Polygroup Ltd. v. Willis Electric Co., Ltd., the Patent Trial and Appeal Board denied a Patent Owner request for documents already provided in a co-pending lawsuit but restricted from use by a protective order. IPR2016-01610, Paper...
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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.