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Claim Construction Stipulation Avoids Discretionary Denial

Claim Construction Stipulation Avoids Discretionary Denial

by Matthew Johnson | Feb 4, 2026 | Claim Construction, PTAB News, PTAB Trial Basics, Trial Institution

By Ian Adams, Matt Modderman, Matt Johnson – USPTO Director John Squires issued a decision on October 3, 2025, denying a request to discretionarily deny institution in Caption Health, Inc. v. The University of British Columbia, IPR2025-01422, Paper 15 at 3 (Dec....
Collateral Estoppel May Not Apply When Claim Interpretation Standards Differ

Collateral Estoppel May Not Apply When Claim Interpretation Standards Differ

by Matthew Johnson | Nov 19, 2025 | Claim Construction

By Thane Bonnett* and Matt Johnson – In its recent decision in RØDE Microphones, LLC et. al. vs. Zaxcom, Inc., the PTAB declined to apply collateral estoppel based on prior post-grant proceedings because the prior proceedings had applied a different standard of...
Divergent Claim Construction Results in Discretionary Denial

Divergent Claim Construction Results in Discretionary Denial

by Matthew Johnson | Oct 29, 2025 | Claim Construction, PTAB News, PTAB Trial Basics, Trial Institution

By Evan Tassis and Matt Johnson – In a recent decision, Acting Director Coke Morgan Stewart granted Patent Owner’s request for discretionary denial in Sun Pharmaceuticals Industries Inc. v. Nivagen Pharmaceuticals, Inc., IPR2025-00893.  While some factors...
USPTO Memorandum Clarifies PTAB’s Treatment of Prior Proceedings

USPTO Memorandum Clarifies PTAB’s Treatment of Prior Proceedings

by Matthew Johnson | Oct 9, 2025 | Claim Construction, District Court, PTAB News, PTAB Trial Basics

By Pranita Dhungana and Matt Johnson – The United States Patent and Trademark Office (USPTO) recently issued a memorandum addressing how the Patent Trial and Appeal Board (PTAB) should handle prior findings of fact and conclusions of law when adjudicating patent...
Acting Director Clarifies Multi-Petition Policy for Competing Constructions

Acting Director Clarifies Multi-Petition Policy for Competing Constructions

by Matthew Johnson | Aug 5, 2025 | Claim Construction, PTAB News, PTAB Trial Basics, Trial Institution

By Levent Herguner and Matt Johnson – On June 25, 2025, Acting Director Coke Stewart released an informative decision vacating institution of inter partes review (“IPR”) based on two petitions that were primarily filed to present two different constructions....
Federal Circuit Affirms Despite Claim Construction Error

Federal Circuit Affirms Despite Claim Construction Error

by Matthew Johnson | Mar 25, 2025 | Claim Construction, Federal Circuit Appeal, PTAB News

By Alexa Grillis and Matt Johnson – The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous.  The Court also rejected a...
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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.