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PTAB Pendulum Swings in Favor of Discretionary Denial

PTAB Pendulum Swings in Favor of Discretionary Denial

by Matthew Johnson | Apr 3, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Joshua Nightingale and Daniel Sloan – Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings.  On March 24, 2025, following the February 28,...
PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

by Matthew Johnson | Mar 28, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Jennifer Chheda, Yi Dulkeith, and Tova Werblowsky – A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary...
PTAB Issues Updated Fintiv Guidance

PTAB Issues Updated Fintiv Guidance

by Matthew Johnson | Mar 25, 2025 | PTAB News, Trial Institution

By Matt Johnson – After rescinding the June 2022 guidance regarding Fintiv, the PTAB issued updates to how they will consider discretionary denial issues under Section 314(a) on Monday.  The updated guidance states: On February 28, 2025, the USPTO rescinded the...
Federal Circuit Affirms Despite Claim Construction Error

Federal Circuit Affirms Despite Claim Construction Error

by Matthew Johnson | Mar 25, 2025 | Claim Construction, Federal Circuit Appeal, PTAB News

By Alexa Grillis and Matt Johnson – The Federal Circuit upheld the PTAB’s decision deeming an integrated circuit connector patent unpatentable for obviousness, despite concluding that the Board’s claim construction was erroneous.  The Court also rejected a...
Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent

Motivation to Modify Prior Art Need Not Be the Same as Challenged Patent

by Matthew Johnson | Mar 19, 2025 | Federal Circuit Appeal, PTAB News, PTAB Trial Basics

By Kait Crowder and Matt Johnson – Honeywell filed a petition for inter partes review of 3G Licensing’s U.S. Patent No. 7,319,718, which claims a coding scheme for transmitting information in 3G mobile communication systems.  The PTAB found none of the...
Federal Circuit Rules That Order Of Steps Sometimes Does Matter

Federal Circuit Rules That Order Of Steps Sometimes Does Matter

by Carl Kukkonen | Mar 11, 2025 | Amendment Practice, Claim Construction, Federal Circuit Appeal, PTAB News

By Simon Maxwell and Carl Kukkonen – Back in May of 2020, European patent-licensing company Sisvel filed a flurry of lawsuits against a dozen tech companies who had allegedly infringed Sisvel’s portfolio of wireless communication and networking patents.  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.