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INFORMATIVE: Acting Director Rescinds Institution Where Claims Held Invalid in District Court Case

INFORMATIVE: Acting Director Rescinds Institution Where Claims Held Invalid in District Court Case

by David Maiorana | May 7, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By David Linden, Dave Maiorana, and Sue Gerber – On August 22, 2024, Hulu, LLC (“Hulu”) filed two separate petitions for inter partes review (“IPR”) of U.S. Patent No. 11,463,768 (“the ’768 Patent”), assigned to Piranha Media Distribution, LLC (“Piranha”).  The...
PTAB Allows Three Concurrent IPR Petitions for Unusual Patent Claims

PTAB Allows Three Concurrent IPR Petitions for Unusual Patent Claims

by Matthew Johnson | Apr 25, 2025 | PTAB News, PTAB Trial Basics

By Shane Padilla and Matt Johnson – Recently, the Patent Trial and Appeal Board (“the Board”) was persuaded to consider the merits of three out of seven concurrent petitions for an inter partes review of a single patent due to the patent’s complicated claiming...
Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

Provisionals’ Disclosures Must Fully Support an Issued Claim for Pre-AIA Priority

by Matthew Johnson | Apr 8, 2025 | Prior Art Issues, PTAB News, PTAB Trial Basics

By Ernie Oleksy and Matt Johnson – The PTAB recently provided a pre-AIA priority analysis for reference patents in Roku, Inc. v. Anonymous Media Research Holdings, LLC, No. IPR2024-01057, Paper 10 (P.T.A.B. Feb. 10, 2025). This decision highlights the...
PTAB Pendulum Swings in Favor of Discretionary Denial

PTAB Pendulum Swings in Favor of Discretionary Denial

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

By Joshua Nightingale and Daniel Sloan – Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings.  On March 24, 2025, following the February 28,...
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...
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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.