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Secondary Considerations Arguments Precluded By Prior Nexus Testimony

Secondary Considerations Arguments Precluded By Prior Nexus Testimony

by Matthew Johnson | Sep 20, 2024 | Estoppel, Evidentiary Issues, Final Written Decisions, PTAB News

By Fabian Bramwell,* Daniel Sloan, Jen Bachorik, and Matt Johnson – On June 6, 2024, the PTAB issued a Final Written Decision concluding claims 1-6 of U.S. Patent No. 8,899,655 B1 (“the ’655 patent”) unpatentable.  Yita LLC v. MacNeil IP LLC, IPR2023-00172,...
Shifting Burden Dooms Patent Owner

Shifting Burden Dooms Patent Owner

by Matthew Johnson | Jun 14, 2024 | Evidentiary Issues, Final Written Decisions, Prior Art Issues

By Hailey Stewart,* Evan Tassis and Matt Johnson – In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology,...
Higher Burden of Demonstrating Public Accessibility of a Reference at Final Decision Stage

Higher Burden of Demonstrating Public Accessibility of a Reference at Final Decision Stage

by Jennifer Chheda, Ph.D. | May 13, 2024 | Final Written Decisions, Prior Art Issues, PTAB News, Request for Reconsideration

By Jennifer Chheda and Daniel Sloan – In denying Petitioner Medivis, Inc.’s (“Medivis”) Request for Rehearing of the Patent Trial and Appeal Board’s (“PTAB”) Final Written Decision (“FWD”) in Medivis, Inc. v. Novarad Corp. inter partes review, the PTAB found...
Claim Construction Dispositive In Patentability Determination

Claim Construction Dispositive In Patentability Determination

by Matthew Johnson | Mar 29, 2024 | Claim Construction, Final Written Decisions, PTAB News, PTAB Trial Basics

By Sue Gerber and Matt Johnson – It goes without saying that claim construction is an important issue, but the PTAB’s recent decision in Netflix, Inc. v. DIVX, LLC, IPR2020-00558, Paper 66 (PTAB Feb. 22, 2024), shows not only that reasonable minds can differ...
Supreme Court Denies Petition Arguing for Preclusive Effects of PTAB Decisions Pending Appeal

Supreme Court Denies Petition Arguing for Preclusive Effects of PTAB Decisions Pending Appeal

by David Maiorana | Mar 1, 2024 | Federal Circuit Appeal, Final Written Decisions, PTAB News, PTAB Trial Basics

By Luke Cipolla and Dave Maiorana – On February 20, 2024, the Supreme Court denied Liquidia Technologies’ petition for a writ of certiorari to review a precedential Federal Circuit decision, United Therapeutics Corp. v. Liquidia Techs., Inc., 74 F.4th 1360 (Fed....
RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

by Matthew Johnson | Nov 17, 2023 | Final Written Decisions, PTAB News, PTAB Trial Basics, Trial Institution

By Christian Roberts and Matthew Johnson – On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review...
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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.