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Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds

Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds

by Matthew Johnson | May 15, 2025 | Estoppel, Prior Art Issues, PTAB News, PTAB Trial Basics

By Omar Jishi and Matt Johnson – In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid on...
Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

by Matthew Johnson | Apr 8, 2025 | Prior Art Issues, PTAB News, PTAB Trial Basics

By Ernie Oleksy and Matt Johnson – The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...
Petitioner’s Proof of Printed Publication Falls Short

Petitioner’s Proof of Printed Publication Falls Short

by Matthew Johnson | Mar 12, 2025 | Evidentiary Issues, Prior Art Issues, Trial Institution

By Mike Lavine – On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether the “Dammann”...
No Need to Show Reasonable Expectation of Success Regarding Inherent Property

No Need to Show Reasonable Expectation of Success Regarding Inherent Property

by Matthew Johnson | Feb 6, 2025 | Prior Art Issues, PTAB News

By Raffaella Faraoni and Matt Johnson – The Federal Circuit affirmed six PTAB decisions that held unpatentable as obvious 79 claims of three Cytiva Bioprocess (“Cytiva”) challenged patents and reversed the PTAB decision upholding four claims. JSR Corp. (“JSR”)...
When Is a Published Patent Application Prior Art in an IPR?

When Is a Published Patent Application Prior Art in an IPR?

by Matthew Johnson | Jan 23, 2025 | Federal Circuit, Prior Art Issues, PTAB News, PTAB Trial Basics

By Adam J. Cook and Michael Oblon – On appeal from an inter partes review (“IPR”), the Federal Circuit held that, under pre-America Invents Act (“pre-AIA”) law, a published patent application is prior art as of its filing date as opposed to its later date of...
Thickness Arguments Cross the Line for Federal Circuit

Thickness Arguments Cross the Line for Federal Circuit

by Matthew Johnson | Jan 9, 2025 | Prior Art Issues, PTAB News, PTAB Trial Basics

By Sue Gerber, Adriane Elinski, and Matt Johnson – When issued patent drawings are not explicitly made to scale, the Federal Circuit recently confirmed that arguments relying solely or predominately on the features of those drawings, such as line thickness, are...
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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.