by David Cochran | Jan 31, 2019 | PTAB Trial Basics, Trial Institution
By Kait Crowder and Dave Cochran In Deeper, UAB v. Vexilar, Inc., the PTAB recently considered the extent of its discretion to grant or deny inter partes review in a case where a petitioner challenges multiple claims on numerous grounds. In this case, the petitioner...
by Tim Heverin | Dec 5, 2018 | Trial Institution
By Tim Heverin In a recent “same-party” joinder opinion, the PTAB broke with previous decisions to hold that it did not have authority under 35 U.S.C. § 315(c) to join new issues to an instituted IPR. Proppant Express Investments, LLC. V. Oren Technologies, LLC, Case...
by Matthew Johnson | Dec 5, 2018 | Trial Institution
In its April 2018 decision in SAS Institute, Inc. v. Iancu, the U.S. Supreme Court held that when conducting an inter partes review, the U.S. Patent Office must determine the patentability of each of the claims challenged by the petitioner. Jones Day partners Dave...
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...
by Matthew Johnson | Oct 9, 2018 | Trial Institution
By: Geoffrey K. Gavin and Matthew Johnson Last week, the PTAB denied a rehearing request by a patent owner who asserted that the PTAB’s institution decision failed to comply with PTAB rules, specifically 37 C.F.R. § 42.108, because the institution decision only...
by Jennifer Chheda, Ph.D. | Aug 27, 2018 | Federal Circuit, Trial Institution
By: Jennifer J. Chheda, Ph.D and John D. Kinton The Federal Circuit recently denied Power Integrations, Inc.’s (“PI”) attempt to obtain a writ of mandamus to circumvent the bar in 35 U.S.C. § 314(d) to appeal the Patent Trial and Appeal Board’s (“PTAB”) decisions...
