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Director Says Not Filing Mandatory Notices and POPR Does Not Justify Adverse Judgment

Director Says Not Filing Mandatory Notices and POPR Does Not Justify Adverse Judgment

by Matthew Johnson | Aug 22, 2024 | Preliminary Responses, PTAB News, Time Limits

By Evan Tassis and Matt Johnson – In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition within...
Road Mapping Leads to Dead End

Road Mapping Leads to Dead End

by Matthew Johnson | Jun 21, 2024 | Preliminary Responses, PTAB News, PTAB Trial Basics, Trial Institution

By Dave Cochran and Daniel Sloan – On April 25, 2024, the PTAB denied Masimo Corporation’s (“Petitioner’s”) second petition for inter partes review (“IPR”) against U.S. Patent No. 10,076,257 (the “’257 patent”).  Masimo Corp. v. Apple Inc., IPR2024-00071, Paper...
June Boardside Chat: New Developments in AIA Trials

June Boardside Chat: New Developments in AIA Trials

by Matthew Johnson | Jun 12, 2020 | Evidentiary Issues, Preliminary Responses, PTAB News

By Alex Li and Matt Johnson – On June 11, 2020, the Patent Trial and Appeal Board (PTAB) held a Boardside Chat webinar to discuss new developments in AIA trials.  The discussion featured panelists Vice Chief Judge Michael Tierney and Lead Judge William Saindon....
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...
Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

Federal Circuit Holds That Statements Made In IPRs Can Lead To Prosecution Disclaimer

by Jones Day's PTAB Team | May 12, 2017 | Preliminary Responses, PTAB Trial Basics

In Aylus Networks, Inc. v. Apple, Inc., No. 16-1599 (Fed. Cir. May 11, 2017) (“Federal Circuit Op.”), the Federal Circuit affirmed the district court’s decision that Apple did not infringe Aylus’s patents.  See Aylus Networks, Inc. v. Apple Inc., No. 13-cv-04700-EMC,...

Federal Circuit Panel Finds PTAB Does Not Need to Revisit Redundant Grounds

by Jones Day's PTAB Team | Mar 8, 2016 | 325(d) issues, Preliminary Responses

In Harmonic, Inc. v. AVID Technology, Inc., a Federal Circuit panel affirmed the PTAB’s decision in IPR2013-00252 and ratified certain aspects of the Board’s handling of redundant grounds of unpatentability.  In PTAB trials, such as IPRs, petitioners can...

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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.