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PTAB Permits Extra Briefing to Evaluate Request for Rehearing

PTAB Permits Extra Briefing to Evaluate Request for Rehearing

by Matthew Johnson | Feb 14, 2020 | Amendment Practice, Request for Reconsideration

By Levent Herguner and Matt Johnson – In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims.  See Rimfrost AS v. Aker Biomarine...
Patent Owner Sanctioned For Ex Parte Communications

Patent Owner Sanctioned For Ex Parte Communications

by David Maiorana | Jan 9, 2019 | PTAB News, Request for Reconsideration

By Dave Maiorana Under 37 C.F.R. § 42.5(d), communications with a Board member regarding a specific proceeding are not permitted “unless both parties have an opportunity to be involved in the communication.”  This prohibition, however, does not extend to “referring to...
Role Of Company Board Members May Impact RPI Analysis

Role Of Company Board Members May Impact RPI Analysis

by Jennifer Chheda, Ph.D. | Jan 4, 2019 | Real Party in Interest, Request for Reconsideration

By Jennifer Chheda Ph.D. and John Kinton The Patent Trial and Appeal Board (“PTAB”) recently denied the request of petitioner Fasteners for Retail, Inc. (“FFR” or “petitioner”) for rehearing in connection with decisions denying the institution of inter partes review...
Indefiniteness Again Leads To Unsuccessful IPR Challenge

Indefiniteness Again Leads To Unsuccessful IPR Challenge

by John Marlott | Oct 18, 2018 | Final Written Decisions, Request for Reconsideration, Trial Institution

By T. Kaitlin Crowder, John Marlott, and Dave Cochran The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness).  The PTAB may not institute IPR on any other...
Court Grants Rehearing In Light Of Wi-Fi One

Court Grants Rehearing In Light Of Wi-Fi One

by Carl Kukkonen | Feb 5, 2018 | Estoppel, Federal Circuit, Federal Circuit Appeal, Request for Reconsideration

By: Amanda Leckman and Carl Kukkonen Eleven days after the Federal Circuit’s en banc opinion in Wi-Fi Onc, LLC v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), a three-judge panel granted a petition by patent owner Click-to-Call...
PTAB Grants Rare Rehearing Due To Insufficient Evidence Of Obviousness

PTAB Grants Rare Rehearing Due To Insufficient Evidence Of Obviousness

by Jones Day's PTAB Team | Sep 21, 2017 | Request for Reconsideration

By J. Jason Williams and J. Patrick Elsevier, Ph.D. In Coalition For Affordable Drugs VI, LLC v. Celgene Corp. (2015-01096, -01102, -01103),[1] the PTAB granted Patent Owner Celgene’s request for rehearing of a final written decision that had found the challenged...
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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.