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PTAB Sheds Light on Role of Prior Art in Discretionary Denial

PTAB Sheds Light on Role of Prior Art in Discretionary Denial

by Joe Sauer | Nov 7, 2017 | 325(d) issues, PTAB News, Trial Institution

by Seth M. Bostrom and Joseph M. Sauer The Patent Trial and Appeal Board (PTAB) recently designated as informative three cases involving discretionary denial of inter partes review under 35 U.S.C. § 325(d).  We previously profiled the case of Hospira, Inc. v....
PTAB Provides Glimpse Of What Is Good Cause To Extend Trial

PTAB Provides Glimpse Of What Is Good Cause To Extend Trial

by S. Christian Platt | Oct 30, 2017 | Amendment Practice, PTAB News, Time Limits

By: Christian Platt and Richard Graham The PTAB may, where good cause exists, extend a trial up to six months beyond the required twelve month length pursuant to 35 U.S.C. §316(a)(11).  On October 5, 2017, the PTAB issued its first “good cause” extension of a trial in...
Jones Day Helps Launch Post-Grant Pro Bono Project

Jones Day Helps Launch Post-Grant Pro Bono Project

by David Cochran | Oct 20, 2017 | PTAB News

By Dave Cochran Jones Day has joined forces with the North Carolina Central University (NCCU) School of Law’s IP Law Institute, as well as Fish & Richardson and the SAS Institute Inc., to launch the Post-Grant Clinic. The joint effort launched during a...
Record Petition Filings Projected for FY 2017 – Institution Rate Continues Slide

Record Petition Filings Projected for FY 2017 – Institution Rate Continues Slide

by Matthew Johnson | Sep 17, 2017 | PTAB News

By Matt Johnson The Patent Trial and Appeal Board has released AIA trial filing and disposition numbers for July 2017.  Filings remain near the 150 mark, with 138 total trials being requested in July, 135 of those being requests for Inter Partes Review.  This is down...
In Precedential Decision, Board Says Packard, Not Nautilus, Governs Indefiniteness During Pre-Issuance Examination

In Precedential Decision, Board Says Packard, Not Nautilus, Governs Indefiniteness During Pre-Issuance Examination

by John Marlott | Sep 1, 2017 | PTAB News

By Christian Damon and John Marlott In a prior post we compared the different standards for claim indefiniteness applied by courts in litigation and by the USPTO during pre-issuance and post-issuance proceedings.  Another of our previous posts profiled a real-world...
Final Written Decision Not So Final in Eyes of The ITC

Final Written Decision Not So Final in Eyes of The ITC

by Jones Day's PTAB Team | Jul 25, 2017 | Final Written Decisions, PTAB News

By Christian Damon The ITC recently continued its trend of giving little deference to parallel PTAB IPR proceedings.  In Certain Network Devices, Related Software and Components Thereof (II), Inv. No. 337-TA-945, the ITC denied a request to suspend or rescind a...
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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.