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Forum Selection Clause May Preclude PTAB Proceedings

Forum Selection Clause May Preclude PTAB Proceedings

by Marc S. Blackman | Apr 26, 2019 | PTAB News

By Marc Blackman The Federal Circuit recently affirmed a preliminary injunction barring PTAB proceedings in view of a forum selection clause.  Dodocase VR, Inc. v. MerchSource, LLC, 2018-1724 (Fed. Cir. Apr. 18, 2019). Dodocase, the owner of patents related to virtual...
Rule 36 Judgment May Support Finding of Collateral Estoppel

Rule 36 Judgment May Support Finding of Collateral Estoppel

by Marc S. Blackman | Dec 21, 2018 | Estoppel

By Marc Blackman –  The Federal Circuit recently affirmed final written decisions in two inter partes reviews by holding that the patent owner was collaterally estopped from relitigating the threshold issue of whether a prior art reference was a...
Seeking District Court Assistance For An IPR Proceeding

Seeking District Court Assistance For An IPR Proceeding

by Marc S. Blackman | Nov 15, 2018 | Discovery, PTAB Trial Basics

By Marc Blackman Discovery is limited in inter partes review proceedings.  As we previously discussed here and here, discovery is available only “in the interest of justice,” and requests for discovery frequently are denied.  Yet, a party may be aware of information...
When Is A Timely IPR Petition Not Timely Enough?

When Is A Timely IPR Petition Not Timely Enough?

by Marc S. Blackman | Sep 17, 2018 | Time Limits

By: Marc Blackman Timely IPR Petition A petition for inter partes review is timely if it is filed within one year of service of a complaint alleging infringement of the challenged patent on the petitioner, real party in interest, or privy of the petitioner.  35 U.S.C....
Institution Denied:  Pending Federal Circuit Appeal Warrants Denial of IPR

Institution Denied: Pending Federal Circuit Appeal Warrants Denial of IPR

by Marc S. Blackman | Jul 28, 2018 | Trial Institution

By: Marc S. Blackman The PTAB recently exercised its discretion to deny institution of an IPR proceeding because a potentially dispositive claim construction issue was pending before the Federal Circuit.  Comtech Mobile Datacom Corp v. Vehicle IP, LLC, Case...
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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.