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Be Careful Basing Your IPR On Previously Considered Prior Art

Be Careful Basing Your IPR On Previously Considered Prior Art

by David Maiorana | Jun 22, 2017 | 325(d) issues, Prior Art Issues

By Dave Maiorana It is not always possible for a party seeking to challenge a patent in an IPR to find prior art patents or printed publications that the USPTO has not already considered.  Often the best available prior art comes from the references cited to (or by)...
PTAB Institutes Separate IPR Proceedings Filed by Codefendants, Finding that the Later IPR Proceeding Was Not Barred by 35 U.S.C. § 325(d)

PTAB Institutes Separate IPR Proceedings Filed by Codefendants, Finding that the Later IPR Proceeding Was Not Barred by 35 U.S.C. § 325(d)

by Cary Miller | Jan 30, 2017 | 325(d) issues, Pharmaceutical, Real Party in Interest

By Kunyong Yang and Cary Miller, Ph.D. On January 19, 2017, the PTAB instituted inter partes review of U.S. Patent No. 8,822,438 (“the ’438 patent”) filed by Wockhardt Bio AG (“Wockhardt”) (IPR2016-01582).  The ’438 patent is owned by Janssen Oncology, Inc....

Strategic Considerations for Duplicative Filings before the PTAB – Presentation Slides

by Jones Day's PTAB Team | Mar 28, 2016 | 325(d) issues

Summary of Presentation Slides: Litigants have long utilized duplicative filing of  IPR or CBM petitions to obtain the benefit of arguments made by earlier petitioners and to improve leverage for settlements with patent owners.  Such litigants often rely an important...

Federal Circuit Panel Finds PTAB Does Not Need to Revisit Redundant Grounds

by Jones Day's PTAB Team | Mar 8, 2016 | 325(d) issues, Preliminary Responses

In Harmonic, Inc. v. AVID Technology, Inc., a Federal Circuit panel affirmed the PTAB’s decision in IPR2013-00252 and ratified certain aspects of the Board’s handling of redundant grounds of unpatentability.  In PTAB trials, such as IPRs, petitioners can...

Strategic Use of PTAB’s 325(d) Discretion

by Jones Day's PTAB Team | Jan 29, 2016 | 325(d) issues

The AIA provides PTAB panels a significant amount of discretion in managing their docket, from joinder provisions to the ability to stay or consolidate related, concurrent proceedings in other areas of the Office.  35 U.S.C. § 325(d) provides the Board discretion in...
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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.