by Marc S. Blackman | Jun 7, 2018 | Claim Construction, Federal Circuit, PTAB Trial Basics
By: Marc S. Blackman Whether a claim is indefinite under 35 U.S.C. § 112 is analyzed under different standards by District Courts and the PTAB. District Courts apply the standard articulated by the Supreme Court in Nautilus requiring a patent’s claims, viewed in...
by Jones Day's PTAB Team | Jun 1, 2018 | PTAB News, PTAB Trial Basics
By: Rich Graham and Matt Johnson On June 1, 2018, the PTAB announced new guidance on motions to amend in AIA trials. In view of the decision from the United States Court of Appeals for the Federal Circuit in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed. Cir....
by David Cochran | May 29, 2018 | Claim Construction, PTAB Trial Basics
By: Sanjiv Laud and Dave Cochran The PTAB’s recent decision denying rehearing in United Microelectronics Corp. v. Lone Star Silicon Innovations LLC, IPR2017-01513, Paper 10 (PTAB May 22, 2018) sheds light on the Board’s practice under 37 C.F.R. 42.108(c), which holds...
by Matthew Johnson | May 23, 2018 | CBMs, Estoppel, Motions Practice, PTAB Trial Basics
By: Sue Gerber and Matt Johnson We recently reported some early observations about possible trends at the PTAB in the wake of the Supreme Court’s decision in SAS Institute Inc. v. Iancu. See Observations: Three Weeks After Supreme Court’s SAS Institute Decision. On...
by Carl Kukkonen | May 14, 2018 | Motions Practice, PTAB Trial Basics
By: Stephanie Brooker and Carl Kukkonen The Patent Trial and Appeals Board (PTAB) recently denied a Motion to Dismiss asserting the presence of a conflict of interest of USPTO Director Andrei Iancu. In St. Jude Medical, LLC. v. Snyders Heart Valve LLC, the Patent...
by Matthew Johnson | May 4, 2018 | PTAB Trial Basics
By: Josh Nightingale and Matt Johnson On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that a decision to institute inter partes review under 35 U.S.C. § 314 may not institute on less all claims challenged in the...
