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PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

PTAB Announces Bifurcated Process for Consideration of Discretionary Denial Issues

by Matthew Johnson | Mar 28, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Jennifer Chheda, Yi Dulkeith, and Tova Werblowsky – A new interim process for the Director to exercise discretion as to whether to institute an inter partes review(IPR) or a post grant review (PGR) was announced on March 26, 2025, in which discretionary...
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...
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By Ashvi Patel and Matt Johnson – On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court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...
Speculative IPR Discovery Request Not in the Interest of Justice

Speculative IPR Discovery Request Not in the Interest of Justice

by Lisa Furby | Feb 21, 2025 | Discovery, Evidentiary Issues, PTAB Trial Basics

By Lisa Furby and Jim Twieg – “Because Congress intended inter partes reviews to serve as a faster and more cost-effective alternative to litigating validity in district courts, discovery in inter partes reviews is limited.” See Garmin Int’l, Inc. v....
Similar Claims in Prior IPR Petition Leads to Denial

Similar Claims in Prior IPR Petition Leads to Denial

by Matthew Johnson | Jan 28, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Derek Walker, Evan Tassis, and Matt Johnson – The PTAB recently denied institution of inter partes review of a patent directed to deep packet inspection in software defined networks in Juniper Networks, Inc. v. Orckit Corporation, IPR2024-00895. Applying the...
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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.