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PTAB Designates Two Decisions Declining Review Under § 325(d) as Informative

PTAB Designates Two Decisions Declining Review Under § 325(d) as Informative

by Mike Lavine | Apr 4, 2018 | Final Written Decisions, PTAB News

By: Mike Lavine On March 21, 2018 the PTAB issued a press release announcing that two decisions denying review under 35 U.S.C. § 325(d) are designated as informative: Kayak Software Corp.v. International Business Machines Corp., CBM2016-00075, Paper 16 (PTAB Dec. 15,...
Disclaimer Before Institution May Not Avoid Adverse Judgment Estoppel

Disclaimer Before Institution May Not Avoid Adverse Judgment Estoppel

by Kenneth Luchesi | Feb 1, 2018 | Estoppel, Federal Circuit Appeal, Final Written Decisions, Preliminary Responses

By: Kenneth Luchesi In a split decision that drew separate opinions from each of the panel members, the Federal Circuit recently affirmed the PTAB’s decision to enter an adverse judgment against a patentee, even though the patentee had properly disclaimed all of the...
Inherent Obviousness:  Available IPR Rationale With a High Standard

Inherent Obviousness: Available IPR Rationale With a High Standard

by Cary Miller | Dec 8, 2017 | Final Written Decisions

By Jeff Giering, Ph.D. and Cary Miller, Ph.D. On November 28, 2017, the PTAB issued a final written decision upholding the patentability of U.S. Patent No. 6,667,061 (IPR2016-01096).  The ’061 patent is owned by Alkermes Pharma Ireland, Ltd. and Alkermes Controlled...
SAS Institute Argues Before Supreme Court Against PTAB’s Partial-Decision Practice

SAS Institute Argues Before Supreme Court Against PTAB’s Partial-Decision Practice

by Greg Castanias | Nov 29, 2017 | Final Written Decisions, PTAB News

By Greg Castanias, John Marlott, and Dave Cochran In a closely followed case before the U.S. Supreme Court on behalf of SAS Institute Inc., a cross-office, cross-practice Jones Day team has challenged the Patent Trial and Appeal Board’s (PTAB) practice to elect to...
PTAB Disqualifies Reference for Failure to Show Public Accessibility

PTAB Disqualifies Reference for Failure to Show Public Accessibility

by Joseph Beauchamp | Oct 4, 2017 | Final Written Decisions, PTAB Trial Basics

By Albert Liou and Joe Beauchamp The PTAB’s recent final written decision denying a finding of unpatentability in ABS Global, Inc. v. Inguran, LLC, Case IPR2016-00927, Paper 33 (PTAB Oct. 2, 2017) highlights the importance of obtaining affidavit evidence to prove...
Final Written Decision Not So Final in Eyes of The ITC

Final Written Decision Not So Final in Eyes of The ITC

by Jones Day's PTAB Team | Jul 25, 2017 | Final Written Decisions, PTAB News

By Christian Damon The ITC recently continued its trend of giving little deference to parallel PTAB IPR proceedings.  In Certain Network Devices, Related Software and Components Thereof (II), Inv. No. 337-TA-945, the ITC denied a request to suspend or rescind 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.