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Director Review:  PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

Director Review: PTAB Instructed to Allow Narrowly Tailored Discovery Regarding Time Bar

by Matthew Johnson | May 23, 2025 | Discovery, PTAB News, PTAB Trial Basics, Time Limits

By Daniel Sloan and Matt Johnson – USPTO Acting Director Coke Morgan Stewart recently vacated and remanded three Final Written Decisions from the PTAB.  Semiconductor Components Indus. v. Greenthread, LLC, IPR2023-01242, IPR2023-01243, IPR2023-01244, Paper 94...
Estoppel Trumps Substance:  ITC Bars Respondent’s Invalidity Grounds Raised in IPR

Estoppel Trumps Substance: ITC Bars Respondent’s Invalidity Grounds Raised in IPR

by Matthew Johnson | May 21, 2025 | Estoppel, PTAB News, PTAB Trial Basics

By Evan Tassis and Matt Johnson – Recently, an ITC Administrative Law Judge applied IPR statutory estoppel under 35 U.S.C. § 315(e)(2) in denying a Respondent’s motion for summary determination of invalidity in Certain Audio Players and Components Thereof,...
Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds

Federal Circuit: Petitioner Estoppel Does Not Apply to Product Prior Art Grounds

by Matthew Johnson | May 15, 2025 | Estoppel, Prior Art Issues, PTAB News, PTAB Trial Basics

By Omar Jishi and Matt Johnson – In IOENGINE, LLC v. Ingenico Inc. (Fed. Cir. 2025), the Federal Circuit narrowed the scope of IPR estoppel under 35 U.S.C. § 315(e)(2), which precludes an IPR petitioner from asserting in court that a patent claim “is invalid on...
PTAB Denies Institution of IPRs in Apple v. Haptic

PTAB Denies Institution of IPRs in Apple v. Haptic

by Carl Kukkonen | May 8, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Carl Kukkonen – In two recent decisions, the Patent Trial and Appeal Board (PTAB) denied institution of inter partes review (IPR) proceedings sought by Apple Inc. against Haptic, Inc. regarding U.S. Patent No. 9,996,738 B2. These decisions—IPR2024-01475 and...
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...
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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.