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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...
PTAB Retains Jurisdiction Of Expired Patents

PTAB Retains Jurisdiction Of Expired Patents

by Matthew Johnson | Mar 7, 2025 | PTAB News, PTAB Trial Basics, Standing

By Ellen Geyer and Matt Johnson – The Federal Circuit rejected a recent argument that the PTAB does not have inter partes review (IPR) jurisdiction over expired patents. Because even expired patents involve the grant of public rights, the court explained that...
PTAB Rescinds Discretionary Denial Memorandum

PTAB Rescinds Discretionary Denial Memorandum

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

By Ashvi Patel and Matt Johnson – On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.”  That memorandum discussed...
Two Separate Analyses: Nonobviousness vs Enablement

Two Separate Analyses: Nonobviousness vs Enablement

by Matthew Johnson | Feb 25, 2025 | PTAB News, Request for Reconsideration

By Sabrina Bellantoni and Matt Johnson – Recently, a Director Review was granted where Director Vidal vacated the Patent Trial and Appeals Board’s (“PTAB”) Final Written Decision and remanded back to the PTAB for further consideration of enablement.  Duration...
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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.