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Deadline IPR Service Fails to Bar Institution

Deadline IPR Service Fails to Bar Institution

by Matthew Johnson | Nov 3, 2023 | PTAB News, PTAB Trial Basics, Time Limits

By Tova Werblowsky* and Matt Johnson – The PTAB recently granted institution of inter partes review despite the Patent Owner not receiving the petition for the proceeding until three business days after the statutory deadline. See Kahoot! ASA and Kahoot Edu,...
Federal Circuit Confirms PTAB Standard of Review

Federal Circuit Confirms PTAB Standard of Review

by Carl Kukkonen | Oct 30, 2023 | Amendment Practice, Federal Circuit Appeal, PTAB News

By Carl Kukkonen and Matt Carey – The Federal Circuit in Sisvel International S.A. v. Sierra Wireless, Inc. (Fed. Cir. Sept. 1, 2023) (Prost, Reyna, and Stark) affirmed a PTAB decision finding anticipated and/or obvious certain claims of two patents directed to...
District Court Awards Sanctions for False RPI Identification

District Court Awards Sanctions for False RPI Identification

by Matthew Johnson | Oct 27, 2023 | PTAB News, PTAB Trial Basics, Real Party in Interest

By Sue Gerber and Matt Johnson – The PTAB requires that all petitioners in IPR and PGR proceedings disclose the real party(ies)-in-interest.  While that might seem like a mere formality, a false disclosure can lead to very harsh consequences.  In a recent...
PTAB Doubles Down on Interference Estoppel Issue

PTAB Doubles Down on Interference Estoppel Issue

by Matthew Johnson | Oct 26, 2023 | Estoppel, Final Written Decisions, PTAB News

By Anthony Kim*, Evan Jones, and Matt Johnson – The Patent Trial and Appeal Board held all challenged claims of IGT’s patent unpatentable as obvious over two prior art patents.  Zynga Inc. v. IGT, IPR2022-00199-32.  In doing so, the PTAB further held that,...
Patent Owner Unable to Change Inventorship During Remand

Patent Owner Unable to Change Inventorship During Remand

by Matthew Johnson | Oct 20, 2023 | Final Written Decisions, Prior Art Issues, PTAB News

By Hannah Mehrle and Matt Johnson – At the Inter Partes review trial, Patent Owner attempted to swear behind Petitioner’s primary prior art reference by showing that the inventors of the asserted patents had conceived of the invention before the priority date of...
Parallel Petitions Denied

Parallel Petitions Denied

by Matthew Johnson | Oct 16, 2023 | PTAB News, PTAB Trial Basics, Trial Institution

By Simon Maxwell* and Matt Johnson – On March 15, 2022, Facet Technologies, LLC (Plaintiff/Patent Owner) filed an infringement suit against LifeScan, Inc. (Defendant/Petitioner) in U.S. District Court for infringement of U.S. Patent No. 8,840,635 (the ’635...
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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.