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Cancellation of Claims Deemed An Inappropriate Sanction

Cancellation of Claims Deemed An Inappropriate Sanction

by Matthew Johnson | Aug 14, 2025 | PTAB News, PTAB Trial Basics, Request for Reconsideration, Trial Institution

By Jessie Hess,* Pranita Dhungana, and Matthew Johnson – USPTO Acting Director Stewart sua sponte reconsidered and modified a previous Director Review decision that had affirmed cancellation of all 183 challenged claims as a sanction against patent owner...
Two Week Deadline for PTAB to Issue Notice of Filing Date Accorded

Two Week Deadline for PTAB to Issue Notice of Filing Date Accorded

by S. Christian Platt | Aug 13, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Chris Hodge and S. Christian Platt – On July 18, 2025, Scott R. Boalick, Chief Administrative Patent Judge for the Patent Trials and Appeals Board (“PTAB”), announced that, absent good cause, the PTAB will issue a Notice of Filing Date Accorded within 14 days from...
Subsequent Challenge Does Not Justify Discretionary Denial

Subsequent Challenge Does Not Justify Discretionary Denial

by Matthew Johnson | Aug 8, 2025 | PGR, PTAB News, PTAB Trial Basics, Trial Institution

By Evan Tassis and Matt Johnson – In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner’s request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454.  Even though Petitioner had previously challenged the same patent...
Acting Director Clarifies Multi-Petition Policy for Competing Constructions

Acting Director Clarifies Multi-Petition Policy for Competing Constructions

by Matthew Johnson | Aug 5, 2025 | Claim Construction, PTAB News, PTAB Trial Basics, Trial Institution

By Levent Herguner and Matt Johnson – On June 25, 2025, Acting Director Coke Stewart released an informative decision vacating institution of inter partes review (“IPR”) based on two petitions that were primarily filed to present two different constructions....
“Settled-Expectations” Analysis May Leave Some Petitioners Feeling Unsettled

“Settled-Expectations” Analysis May Leave Some Petitioners Feeling Unsettled

by Matthew Johnson | Jul 23, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Sue Gerber and Matt Johnson – As discretionary denials are on the rise and institution rates are declining at the PTAB (link), recent decisions from the PTAB have introduced the notion of a patent owner’s “settled expectations” as another reason for the PTAB...
Discretionary Denial Where Inventors Petitioned for Unpatentability

Discretionary Denial Where Inventors Petitioned for Unpatentability

by Matthew Johnson | Jul 18, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Hannah Mehrle and Matt Johnson – Coke Morgan Stewart, the acting director of the United States Patent and Trademark Office (“USPTO”), exercised discretion under 35 U.S.C. § 314(a) to deny Tessell’s (“Petitioner’s”) petition in favor of Nutanix (“Patent...
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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.