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Timing Is Key in PTAB’s Decision to Review Follow-On Petition by Different Party

Timing Is Key in PTAB’s Decision to Review Follow-On Petition by Different Party

by Matthew Johnson | Jul 17, 2019 | PTAB News

By Cathy Chin Eng and Matt Johnson Relying on 35 U.S.C. § 314(a), the Patent Trial and Appeal Board has articulated its reluctance to review “follow-on” petitions challenging the validity of patents that have been previously subjected to inter partes review.  As...
NEWS: USPTO Issues Updates To PTAB Trial Practice Guide

NEWS: USPTO Issues Updates To PTAB Trial Practice Guide

by Matthew Johnson | Jul 16, 2019 | PTAB News

The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in August 2012, concurrent with the promulgation of the AIA Trial Rules. A first...
SDNY Rules Forum Selection Clause Does Not Bar IPR

SDNY Rules Forum Selection Clause Does Not Bar IPR

by Matthew Johnson | Jul 10, 2019 | PTAB News

By Alex Li and Matt Johnson On July 2, 2019, Judge Cote of the Southern District of New York issued an opinion that denied a motion for a preliminary injunction ordering the defendant to withdraw its petitions for inter parties review (“IPR”) at the Patent Trial and...
PTAB Orders Petitioner’s Expert to Produce Discovery

PTAB Orders Petitioner’s Expert to Produce Discovery

by Marc S. Blackman | Jul 9, 2019 | Discovery, PTAB News

By  Marc S. Blackman The PTAB recently granted a Patent Owner’s motion to take additional discovery of Petitioner’s expert.  In particular, the PTAB ordered Petitioner’s expert to produce documents that identify materials he reviewed in preparing his declaration. ...
States Cannot Claim Sovereign Immunity to Shield Their Patents From IPR

States Cannot Claim Sovereign Immunity to Shield Their Patents From IPR

by David Maiorana | Jul 1, 2019 | PTAB News

By Bobby Karl* and Dave Maiorana In a precedential decision, issued June 14, 2019, the Federal Circuit affirmed the PTAB’s ruling against the University of Minnesota, declining to dismiss petitions for inter partes review (“IPR”).  The court rejected the university’s...
Federal Agencies May Not Challenge Patents in AIA Post-Issuance Proceedings

Federal Agencies May Not Challenge Patents in AIA Post-Issuance Proceedings

by Greg Castanias | Jun 18, 2019 | PTAB News, Standing

By Greg Castanias, Dave Cochran, Jennifer Swize, and Jihong Lou The Supreme Court ruled in Return Mail that a federal agency is not a “person” who may challenge an issued patent in inter partes review, post-grant review, or CBM review under the AIA. In its...
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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.