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Motion for Additional Discovery Based on Unraised Arguments Denied

Motion for Additional Discovery Based on Unraised Arguments Denied

by Josh Nightingale | Sep 1, 2022 | Discovery, PTAB News

By Christian Roberts and Josh Nightingale – The Patent Trial and Appeal Board (“PTAB”) recently denied a Petitioner’s Motion for Additional Discovery.  Scientific Design Co., Inc. v. Shell Oil Co., IPR2021-01537, Paper 18 (PTAB Aug. 12, 2022). In an inter partes...
IPR Estoppel A Paper Tiger?

IPR Estoppel A Paper Tiger?

by John Evans, Ph.D. | Aug 26, 2022 | District Court, Estoppel, PTAB News

By Lisa Furby, John Evans, and Michelle Smit – After a final written decision issues, an IPR petitioner is statutorily estopped from going back to the district court and arguing that the same claims are “invalid on any ground that the petitioner raised or...
“Voluntary Interrogatory Responses” Excluded As Inadmissible Hearsay

“Voluntary Interrogatory Responses” Excluded As Inadmissible Hearsay

by Matthew Johnson | Aug 23, 2022 | Evidentiary Issues, PTAB News, PTAB Trial Basics

By Sue Gerber and Matt Johnson – While creativity has its place in advocacy, it can be taken too far.  The Petitioner learned this lesson the hard way in Unified Patents Inc. v. American Patents LLC, IPR2019-00482, Paper 132 (P.T.A.B. Aug. 3, 2022).  In this...
Library Indexing Insufficient to Establish Public Accessibility

Library Indexing Insufficient to Establish Public Accessibility

by Carl Kukkonen | Aug 17, 2022 | Evidentiary Issues, PTAB News

By Carl Kukkonen – In Salesforce.com, Inc. v. WSOU Investments, LLC d/b/a Brazos Licensing and Development, the Board denied institution of inter partes review of a patent directed to providing content to a limited display terminal (e.g., a PDA) because...
USPTO Releases Study On Fintiv Denials

USPTO Releases Study On Fintiv Denials

by Josh Nightingale | Aug 10, 2022 | PTAB News, Trial Institution

By Luke Cipolla*, Robby Breetz, and Josh Nightingale – The USPTO released a study in June 2022 that analyzed the prevalence of Fintiv denials occurring between January 1, 2019 and December 31, 2021.  The Study focused on data illustrating how often patent owners...
IDS Initials Insufficient to Show Examiner Did Not Err

IDS Initials Insufficient to Show Examiner Did Not Err

by Matthew Johnson | Aug 4, 2022 | 325(d) issues, PTAB News

By Ibrahim Ijaz,* Evan Jones, and Matt Johnson – On July 6, 2022, a panel of three Patent Trial and Appeal Board (“PTAB”) administrative patent judges granted institution of inter partes review (“IPR”) in STMicroelectronics, Inc. v. Trustees of Purdue...
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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.