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Section 316(a)(11) Time Limits Do Not Apply Beyond First FWD

Section 316(a)(11) Time Limits Do Not Apply Beyond First FWD

by Matthew Johnson | May 18, 2022 | Final Written Decisions, Time Limits

By Haytham Soliman and Matt Johnson – In Laboratoire Francais du Fractionnement et des Biotechnologies S.A. v. Novo Nordisk Healthcare AG, the Patent Trial and Appeal Board (PTAB) denied the Petitioner’s motion to terminate the inter partes review (IPR) and to...
Confidential Manual Deemed Not A Printed Publication

Confidential Manual Deemed Not A Printed Publication

by Joseph Beauchamp | May 11, 2022 | Final Written Decisions, Prior Art Issues

By Alison Ibendahl and Joe Beauchamp – In a recent decision, the Patent Trial and Appeals Board found that no claims challenged were unpatentable, after finding manuals relied upon as prior art did not qualify as “printed publications” under 35 U.S.C. § 311(b). ...
PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence

PTAB Denies IPR Institutions Without Patent Owner Rebuttal Evidence

by Joe Sauer | Nov 15, 2021 | Evidentiary Issues, Final Written Decisions, Trial Institution

By Stephanie Mishaga, Joseph Sauer, and Evan McLean – It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions.  The PTAB has discretionarily denied IPR petitions,...
PTAB Lifts Arthrex Remand Stay

PTAB Lifts Arthrex Remand Stay

by Matthew Johnson | Nov 11, 2021 | Final Written Decisions, PTAB Trial Basics

By Evan Jones* and Matt Johnson – On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Boalick lifted a May 1, 2020 stay issued by the PTAB pending the Supreme Court’s consideration of Arthrex in which 103 cases were placed in “administrative...
PTAB Declines To Enter Adverse Judgment Against Pre-Institution Disclaimed Claims

PTAB Declines To Enter Adverse Judgment Against Pre-Institution Disclaimed Claims

by Matthew Johnson | May 7, 2021 | Final Written Decisions

By Andrea Beathard and Matt Johnson – Although the Federal Circuit had previously held that the PTAB may enter adverse judgment when a patent owner disclaims all claims challenged in an inter partes review (“IPR”) petition before an institution decision, in...
PTAB Decision Conflicts With District Court’s

PTAB Decision Conflicts With District Court’s

by Matthew Johnson | Sep 18, 2020 | Final Written Decisions

By Mike Lavine and Matt Johnson – The PTAB and District Courts do not always see eye to eye when it comes to prior art.  On August 21, 2020, the Board issued a trio of final written decisions refusing to invalidate the claims of three patents, two of which have...
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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.