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PTAB Issues Notice of Discretionary Denial Rulemaking

PTAB Issues Notice of Discretionary Denial Rulemaking

by Matthew Johnson | Oct 17, 2025 | District Court, Petitions, PTAB News, PTAB Trial Basics, Time Limits, Trial Institution

By Matt Johnson – On October 17th, the PTAB issued a Notice of Proposed Rulemaking regarding criteria for the Office to apply when making discretionary denial determinations. The proposed rule would: Require an IPR petitioner to file a stipulation not to pursue...
PRECEDENTIAL – Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

PRECEDENTIAL – Patent Appendix That Was Referenced, But Not Incorporated, Is Not Prior Art

by Bill Devitt | Feb 1, 2024 | Petitions, Prior Art Issues, Trial Institution

By Connor Scholes, Owen Carpenter, Bill Devitt, and Dave Maiorana – In Apple Inc. v. DoDots Licensing Sols. LLC, IPR2023-00939, Paper 12 (PTAB Jan. 3, 2024) (“Decision”), the PTAB clarified what is and what is not part of the prior art, and as such what can be...
“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial

“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial

by Josh Nightingale | Jan 23, 2024 | Petitions, PTAB News, Trial Institution

By Daniel Sloan and Josh Nightingale – The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023).  There, the PTAB held that (1) a Sotera...
A Petitioner’s Guide: Navigating Uncertainty on PGR Eligibility

A Petitioner’s Guide: Navigating Uncertainty on PGR Eligibility

by Josh Nightingale | Feb 28, 2023 | Petitions, PGR, Trial Institution

By Ashvi Patel and Josh Nightingale – Samsung Electronics Co. (“Samsung”) recently faced the issue of determining whether U.S. Patent No. 11,163,823 (“the ‘823 patent”) is a pre- or post-AIA patent.  Hedging its bets, Samsung concurrently filed two petitions—one...
PTAB Declines To Apply Assignor Estoppel

PTAB Declines To Apply Assignor Estoppel

by Matthew Johnson | Oct 27, 2022 | Petitions, PTAB News

By Ashvi Patel* and Matt Johnson – Patent Owner, C.R. Laurence Co. Inc. (CRL), filed a patent infringement suit against Petitioner, Frameless Hardware Company LLC (FHC) for infringement of U.S. Patent No. 9,074,413 (the ‘413 patent) directed to framing members...
PTAB Permits Incorporation by Reference in Expert Declaration

PTAB Permits Incorporation by Reference in Expert Declaration

by Josh Nightingale | Nov 3, 2021 | Petitions

By Alex Li and Josh Nightingale – The first step in requesting an inter partes review (IPR) of a granted patent is the filing of a petition before the Patent Trial and Appeal Board (PTAB), in which the petitioner states the grounds for the invalidity of the...
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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.