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Another Bite?  CAFC Allows Expansion of Arguments in Reply

Another Bite? CAFC Allows Expansion of Arguments in Reply

by Emily Tait | Dec 8, 2023 | Federal Circuit Appeal, PTAB News, PTAB Trial Basics

By Evan Jones and Emily Tait – In a recent decision, the Federal Circuit found no abuse of discretion by the Board when it allowed Apple to expand its analogous art contention in its IPR reply, finding that the Board’s decision did not run afoul of the “newness”...
Error! PTAB Denies Motion for Supplemental Information to Correct Inadvertent Omission

Error! PTAB Denies Motion for Supplemental Information to Correct Inadvertent Omission

by Albert Liou | Dec 5, 2023 | Motions Practice, PTAB News, PTAB Trial Basics

By Albert Liou and Daniella Paredes – In Nanobebe US Inc. v. Mayborn (UK) Limited et al., the PTAB denied a Petitioner’s Motion to submit supplemental information, even though Petitioner argued the information had been inadvertently omitted in the original...
Institution Denied Based On Written Description in “Alternative Embodiments”

Institution Denied Based On Written Description in “Alternative Embodiments”

by Evan McLean | Nov 29, 2023 | Prior Art Issues, PTAB News, Trial Institution

By Evan Jones and Evan McLean – On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487.  IPR2023-00519, Paper 10. The ’487 patent relates generally...
Narrow Stipulation Results in Fintiv Denial

Narrow Stipulation Results in Fintiv Denial

by David Maiorana | Nov 21, 2023 | PTAB News, PTAB Trial Basics, Trial Institution

By David Linden and Dave Maiorana – On March 31, 2023, Zhuhai CosMX Battery Co., Ltd. (“Zhuhai”) filed a petition for inter partes review (“IPR”) of claims of U.S. Patent No. 11,329,352 (“the ’352 Patent”), assigned to Ningde Amperex Technology Ltd....
RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

RULEMAKING: PTO Aims for Transparency, Judicial Independence at PTAB

by Matthew Johnson | Nov 17, 2023 | Final Written Decisions, PTAB News, PTAB Trial Basics, Trial Institution

By Christian Roberts and Matthew Johnson – On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review...
PTAB Not Required to Decode Petitioner Arguments

PTAB Not Required to Decode Petitioner Arguments

by David Maiorana | Nov 16, 2023 | Federal Circuit, Federal Circuit Appeal, PTAB News

By Dave Maiorana and Megan McKnelly – In a precedential opinion, the Federal Circuit affirmed two Patent Trial and Appeal Board (“PTAB”) patentability decisions, holding that the PTAB did not abuse its discretion by not addressing arguments not clearly presented...
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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.