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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...
SAS Files Opening Brief in Supreme Court Opposing “Partial” Final Written Decisions

SAS Files Opening Brief in Supreme Court Opposing “Partial” Final Written Decisions

by Greg Castanias | Jul 21, 2017 | PTAB News

By Greg Castanias On July 20, SAS Institute, Inc., represented by Jones Day, filed its opening brief in the Supreme Court. SAS’s brief amplifies the arguments, initially set forth in its petition for certiorari and reply brief in support of certiorari, that...
Senate Bill for STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

Senate Bill for STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

by Doug Pearson | Jul 3, 2017 | PTAB News

By Doug Pearson On June 21, Senators Chris Coons (D-Del), Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hironoa (D-Hawaii) introduced a bill entitled the “Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act of 2017” (or...
District Court deference to PTAB regarding priority claim?  Not necessarily.

District Court deference to PTAB regarding priority claim? Not necessarily.

by David Cochran | Jun 9, 2017 | PTAB News

By Jaime Choi and Dave Cochran In instituting IPR of a particular patent, the PTAB found that the patent was not entitled to its priority claim, thus opening it up to invalidity attacks.  However, because the PTAB’s decision was not being challenged in the District...
Eleventh Amendment Revisited – Board Again Finds Sovereign Immunity Applies to PTAB

Eleventh Amendment Revisited – Board Again Finds Sovereign Immunity Applies to PTAB

by Joe Sauer | Jun 5, 2017 | PTAB News

By Josh Sallmen and Joe Sauer Less than four months after its decision in Covidien LP v. University of Florida Research Foundation Incorporated, finding that Eleventh Amendment sovereign immunity applies to PTAB proceedings, the Board has again dismissed an IPR...
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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.