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PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

PTAB Institutes IPR Despite Concurrent Ex Parte Reexamination

by Matthew Johnson | May 1, 2025 | 325(d) issues, Trial Institution

By Levent Herguner and Matt Johnson – In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...
Director Review: PTAB Must Articulate Bases for Section 325(d) Denial

Director Review: PTAB Must Articulate Bases for Section 325(d) Denial

by Josh Nightingale | Apr 5, 2024 | 325(d) issues, PTAB Trial Basics, Trial Institution

By Ashvi Patel and Josh Nightingale – Director Vidal recently vacated the Patent Trial and Appeal Board’s (PTAB) decision to deny institution of three petitions for inter partes review (IPR), citing insufficient explanation for denial under 35 U.S.C....
Petitioner Prevails In Institution Decision Do-Over After Director Steps In

Petitioner Prevails In Institution Decision Do-Over After Director Steps In

by Josh Nightingale | Jan 4, 2024 | 325(d) issues, Trial Institution

By Connor Scholes, Ashvi Patel, and Josh Nightingale – On November 6, 2023, the PTAB issued an decision instituting inter partes review of U.S. Patent No. 10,681,009 B2 (“the ’009 patent”) in Keysight Technologies, Inc. v. Centripetal Networks, Inc.,...
Limitations Absent from a Notice of Allowability May be Material

Limitations Absent from a Notice of Allowability May be Material

by Matthew Johnson | Oct 10, 2023 | 325(d) issues, PTAB News, Trial Institution

By Daniel Sloan and Matt Johnson – On August 24, 2023, USPTO Director Kathi Vidal vacated a PTAB decision denying institution of inter partes review in Keysight Technologies, Inc. v. Centripetal Networks, Inc. and remanded the case for further proceedings....
PTAB Rejects Double-Dose of Prior Art

PTAB Rejects Double-Dose of Prior Art

by Geoffrey Gavin | Sep 26, 2023 | 325(d) issues, PTAB News, Trial Institution

By Matt Modderman, Asvhi Patel, Geoffrey Gavin – In Sandoz Inc. v. Acerta Pharma B.V. (IPR2023-00478), a Patent Trial and Appeal Board (“PTAB”) panel denied IPR institution where the asserted prior art was cumulative of that considered during prosecution.  This...
Common Inventorship And Technology Insufficient For 325(d) Denial

Common Inventorship And Technology Insufficient For 325(d) Denial

by Matthew Johnson | Sep 11, 2023 | 325(d) issues, PTAB News, Trial Institution

By Matt Johnson and Jack Graves— The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had previously...
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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.