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Trial Date Drives PTAB’s Denial of IPR Institution

Trial Date Drives PTAB’s Denial of IPR Institution

by Mike Lavine | May 16, 2025 | District Court, PTAB News, Trial Institution

By Mike Lavine – On April 16, 2025, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) for several claims of U.S. Patent No. 7,187,307, owned by Universal Connectivity Technologies, Inc. HP Inc., Dell Technologies Inc., Dell...
Third Party IPRs Sway District Court’s Prevailing Party and Costs Rulings

Third Party IPRs Sway District Court’s Prevailing Party and Costs Rulings

by John Marlott | Jan 2, 2025 | District Court, PTAB News

By Connor Scholes, Daniel Sloan, and John Marlott – Third-party IPRs can moot previously favorable decisions and leave a previously successful party to bear its own costs. On October 16, 2024, Judge Rodney Gilstrap denied the plaintiff’s Motion to be Confirmed...
PREVAIL Act Passes Committee

PREVAIL Act Passes Committee

by Matthew Johnson | Dec 18, 2024 | District Court, Estoppel, PTAB News, PTAB Trial Basics

By Levent Herguner, Derek Walker, and Matt Johnson – The Promoting and Respecting Economically Vital American Innovation Leadership (“PREVAIL”) Act has moved to the Senate for a full vote after passing the Senate Judiciary Committee vote 11-10 on November 21,...
PTAB Claim Construction May Be Binding In Later Litigation

PTAB Claim Construction May Be Binding In Later Litigation

by Matthew Johnson | Sep 4, 2024 | Claim Construction, District Court, Estoppel, PTAB News, PTAB Trial Basics

By Sue Gerber and Matt Johnson – In 2016, the Federal Circuit expressed doubt that claim constructions from the PTAB could give rise to estoppel in later litigation because “the [PTAB] applies the broadest reasonable construction of the claims while the district...
Federal Circuit Clarifies Scope of Patent Owner Estoppel

Federal Circuit Clarifies Scope of Patent Owner Estoppel

by Matthew Johnson | Aug 28, 2024 | District Court, Estoppel, PTAB News

By Shane Padilla, Matt Chung, Sarah Geers, and Matt Johnson – The Federal Circuit recently issued a decision in SoftView LLC v. Apple Inc. clarifying the scope of patent owner estoppel set forth in 37 C.F.R. § 42.73(d)(3)(i). 2024 WL 3543902 (Fed. Cir. July 26,...
District Court Charts Middle Ground In Prosecution Bar

District Court Charts Middle Ground In Prosecution Bar

by Matthew Johnson | Jul 15, 2024 | District Court, PTAB News

By Nick Marasco,* Matt Modderman, Matt Johnson – The U.S. District Court for the District of Delaware recently issued a protective order settling a dispute over the scope of a proposed prosecution bar. Aerin Medical Inc. v. Neurent Medical Inc., No. 23-756, Dkt....
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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.