PTAB Litigation Blog
  • Home
  • Cookie Policy
  • About
  • Advanced Topics
  • Contributors
  • Contacts
  • Design Patents
  • Discovery
  • Joinder
Select Page
Invalidity Counter Against Unasserted Claim Does Not Implicate §315(a)

Invalidity Counter Against Unasserted Claim Does Not Implicate §315(a)

by David Maiorana | Oct 15, 2020 | PTAB Trial Basics, Standing

By Dave Maiorana – It is well-established that a counterclaim for invalidity in a district court litigation does not trigger the 35 U.S.C. § 315(a) bar.  See 35 U.S.C. § 315(a)(3).  See also our previous posts here and here discussing strategies for declaratory...
Court Allows Accused Infringer’s Have-Cake, Eat-Cake Patent Invalidity Strategy

Court Allows Accused Infringer’s Have-Cake, Eat-Cake Patent Invalidity Strategy

by John Marlott | Apr 16, 2020 | PTAB Trial Basics, Standing

By John Marlott – While acknowledging an “apparent loophole” in the America Invents Act, a district court has permitted an accused-infringer-DJ-plaintiff to pursue counterclaims for patent invalidity—with no bar on later seeking an IPR at the PTAB. Epic Games,...
Return to Sender: PTAB Denies Government Contractor IPRs

Return to Sender: PTAB Denies Government Contractor IPRs

by Albert Liou | Mar 3, 2020 | Standing

By Albert Liou and Chris Buxton – After the Supreme Court’s 2019 decision in Return Mail, Inc. v. United States Postal Service, 139 S. Ct. 1853 (2019), held that federal agencies are not “persons” eligible to challenge a patent at the PTAB, the government was...
PTAB Designates Precedential Decision Relating to Infringer’s Civil Action Barring IPR

PTAB Designates Precedential Decision Relating to Infringer’s Civil Action Barring IPR

by Geoffrey Gavin | Sep 12, 2019 | PTAB Trial Basics, Standing

By Geoffrey Gavin and Matt Johnson The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the patent.  See...
Patent Owner in Standard-Essential Patent Pool Has Standing to Appeal

Patent Owner in Standard-Essential Patent Pool Has Standing to Appeal

by Matthew Johnson | Aug 1, 2019 | Federal Circuit, Prior Art Issues, Standing

By Elizabeth Dengler,* Mike Lavine, Jihong Lou, Matthew Johnson Samsung Electronics Co., Ltd. (“Samsung”) petitioned for inter partes review (“IPR”) of U.S. Patent No. 8,917,772 (“the ‘772 Patent”), which is owned by Infobridge and is directed to encoding and decoding...
Federal Agencies Not Eligible To Challenge Patents In PTAB Trials

Federal Agencies Not Eligible To Challenge Patents In PTAB Trials

by Greg Castanias | Jun 21, 2019 | Standing

Gregory A. Castanias and Jihong Lou On June 10, in a 6-3 decision in Return Mail, Inc. v. United States Postal Service, the Supreme Court ruled that a federal agency is not a “person” eligible to request post-issuance review of a patent under the Leahy-Smith America...
« Older Entries

About this blog

Follow us on Twitter

Categories

  • 325(d) issues
  • Amendment Practice
  • CBMs
  • Claim Construction
  • Design Patents
  • Discovery
  • Estoppel
  • Evidentiary Issues
  • Expert Witnesses
  • Federal Circuit
  • Federal Circuit Appeal
  • Final Written Decisions
  • Joinder
  • Motions Practice
  • Other News
  • Patent Eligible Subject Matter
  • Petitions
  • PGR
  • Pharmaceutical
  • Preliminary Responses
  • Prior Art Issues
  • PTAB News
  • PTAB Trial Basics
  • Real Party in Interest
  • Request for Reconsideration
  • Standing
  • Stay
  • Time Limits
  • Trial Institution
  • Uncategorized

Archives

Links

www.jonesday.com

About Jones Day's Intellectual Property Practice

Subscribe to Jones Day publications

  • Privacy
  • Facebook
  • Twitter
  • Google
  • RSS

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.

We use cookies to deliver our online services. Details of the cookies and other tracking technologies we use and instructions on how to disable them are set out in our Cookies Policy. By using this website you consent to our use of cookies. Cookie Policy