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USPTO Finalizes Partial Permanence of MTA Pilot Program

USPTO Finalizes Partial Permanence of MTA Pilot Program

by S. Christian Platt | Dec 2, 2024 | Amendment Practice, PTAB News, PTAB Trial Basics

By Adam J. Cook, Kristen VandeVoort,* Daniel Sloan, and Christian Platt – On October 18, 2024, the USPTO’s final rule regarding Motion to Amend (“MTA”) practice and procedures in trial proceedings under the America Invents Act became effective.  The rule makes...
Don’t Wait To Seek Discovery Or It May Be Too Late

Don’t Wait To Seek Discovery Or It May Be Too Late

by Matthew Johnson | Nov 18, 2024 | Discovery, Evidentiary Issues, Prior Art Issues, PTAB Trial Basics

By Sue Gerber and Matt Johnson – “The statutory provisions for inter partes reviews, post-grant reviews, and covered-business method patent reviews caution against overly broad discovery and provide the same considerations, including efficient administration of...
Imprecise Claim Charts and Improper Incorporation By Reference Result in Institution Denial

Imprecise Claim Charts and Improper Incorporation By Reference Result in Institution Denial

by David Maiorana | Nov 4, 2024 | PTAB News, PTAB Trial Basics, Trial Institution

By David Linden and Dave Maiorana – On March 23, 2024, Nearmap US, Inc. (“Nearmap”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 10,671,648 (“the ’648 Patent”) (“IPR716”), assigned to Eagle View Technologies, Inc. (“Eagle View”).  The ’648...
PTAB Rule Permits Solo Representation and Automatic Pro Hac Vice Admission

PTAB Rule Permits Solo Representation and Automatic Pro Hac Vice Admission

by Matthew Johnson | Oct 24, 2024 | PTAB News, PTAB Trial Basics

By Nicholas D’Andrea and Matt Johnson – On October 10, 2024, the USPTO issued a final rule allowing parties to proceed without backup counsel in AIA proceedings and implementing an automatic admission process for pro hac vice attorneys.  Full text of the...
Institution Denied for Failure to Show Disclosure in Provisional Application

Institution Denied for Failure to Show Disclosure in Provisional Application

by David Maiorana | Sep 13, 2024 | Prior Art Issues, PTAB Trial Basics, Real Party in Interest, Trial Institution

By David Linden and Dave Maiorana – On December 1, 2023, Intelligent Wellhead Systems, Inc. (“Intelligent”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 11,401,779 (“the ’779 Patent”) (“IPR256”), assigned to Downing Wellhead Equipment, LLC...
Director Says Typo Was Read Incorrectly

Director Says Typo Was Read Incorrectly

by Matthew Johnson | Sep 5, 2024 | Prior Art Issues, PTAB News, PTAB Trial Basics, Request for Reconsideration

By Owen Carpenter and Matt Johnson –  – On July 30, 2024, Director Vidal ordered patent board judges to revisit a ruling on “an obvious typographical error.” See Hesai Technology Co. Ltd., Hesai Group, and Hesai Inc. v. Ouster, Inc., IPR2023-01485....
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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.