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Post-filing Activity May Create Privity Leading To Section 315(b) Dismissal

Post-filing Activity May Create Privity Leading To Section 315(b) Dismissal

by Matthew Johnson | Sep 16, 2025 | PTAB News, PTAB Trial Basics, Real Party in Interest, Trial Institution

By Sue Gerber and Matt Johnson – Under Section 315(b), an IPR may be dismissed as time barred “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is...
Skechers IPR Still Kicking After Director Review

Skechers IPR Still Kicking After Director Review

by Matthew Johnson | Sep 11, 2025 | PTAB News, Trial Institution

By Adam Cook and Matt Johnson – In a Director Review, the Acting Director reversed a panel decision to discretionarily deny an IPR under § 325(d).  The Acting Director held that the PTAB’s own findings in two previous IPRs sufficiently proved Examiner error...
Navigating the New Discretionary Denial Bifurcated Framework

Navigating the New Discretionary Denial Bifurcated Framework

by Matthew Johnson | Sep 10, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Pranita Dhungana and Matt Johnson – The USPTO recently published a new webpage on the Interim Director Discretionary Process, which provides information regarding the bifurcated process for consideration of discretionary denial issues announced in the March...
All Grounds Must Be Addressed in Final Written Decision

All Grounds Must Be Addressed in Final Written Decision

by Matthew Johnson | Sep 5, 2025 | Federal Circuit Appeal, Final Written Decisions, PTAB News

By: Daniel C. Sloan and Matt Johnson – On July 29, 2025, Chief Administrative Patent Judge Scott R. Boalick circulated a memorandum to Members of the PTAB entitled “Final Written Decision Procedures for AIA Trial Proceedings.”  Absent extraordinary...
Acting Director Reverses Previous Discretionary Denial

Acting Director Reverses Previous Discretionary Denial

by Sarah Geers | Aug 29, 2025 | PTAB News, PTAB Trial Basics, Request for Reconsideration, Trial Institution

By Adam Cook and Sarah Geers – For the first time under the bifurcated institution procedures, the Acting Director reversed her own prior discretionary denial, citing changed circumstances based on a settlement in the parallel district court litigation.  See Arm...
Institution Denied Based on Parallel Proceeding and Prior Denial

Institution Denied Based on Parallel Proceeding and Prior Denial

by David Maiorana | Aug 22, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By David Linden and Dave Maiorana – On December 6, 2024, Comcast Cable Communications, LLC (“Comcast”) filed three separate petitions for inter partes review (“IPR”) of U.S. Patent No. 9,866,438 (“the ’438 Patent”), which is assigned to Entropic Communications,...
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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.