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Parallel Petitions Denied

Parallel Petitions Denied

by Matthew Johnson | Oct 16, 2023 | PTAB News, PTAB Trial Basics, Trial Institution

By Simon Maxwell* and Matt Johnson – On March 15, 2022, Facet Technologies, LLC (Plaintiff/Patent Owner) filed an infringement suit against LifeScan, Inc. (Defendant/Petitioner) in U.S. District Court for infringement of U.S. Patent No. 8,840,635 (the ’635...
Limitations Absent from a Notice of Allowability May be Material

Limitations Absent from a Notice of Allowability May be Material

by Matthew Johnson | Oct 10, 2023 | 325(d) issues, PTAB News, Trial Institution

By Daniel Sloan and Matt Johnson – On August 24, 2023, USPTO Director Kathi Vidal vacated a PTAB decision denying institution of inter partes review in Keysight Technologies, Inc. v. Centripetal Networks, Inc. and remanded the case for further proceedings....
PTAB Rejects Double-Dose of Prior Art

PTAB Rejects Double-Dose of Prior Art

by Geoffrey Gavin | Sep 26, 2023 | 325(d) issues, PTAB News, Trial Institution

By Matt Modderman, Asvhi Patel, Geoffrey Gavin – In Sandoz Inc. v. Acerta Pharma B.V. (IPR2023-00478), a Patent Trial and Appeal Board (“PTAB”) panel denied IPR institution where the asserted prior art was cumulative of that considered during prosecution.  This...
PTAB Applies General Plastic Factors to Serial Petitions Seeking Joinder

PTAB Applies General Plastic Factors to Serial Petitions Seeking Joinder

by David Maiorana | Sep 15, 2023 | Joinder, PTAB News, Trial Institution

By David Linden and Dave Maiorana – In February 2023, T-Mobile USA, Inc. (“T-Mobile”) filed petitions requesting four inter partes reviews (“the T-Mobile IPRs”)—two of which challenged U.S. Patent No. 8,630,234 and two of which challenged U.S. Patent No....
Failure to Challenge Patent Owner’s Assertions Proves Detrimental

Failure to Challenge Patent Owner’s Assertions Proves Detrimental

by Matthew Johnson | Sep 13, 2023 | Prior Art Issues, PTAB News, Trial Institution

By Evan Tassis and Matt Johnson – The PTAB recently denied institution of inter partes review of a patent directed to determining the pitch of roofs after finding that Petitioner failed to directly challenge the sufficiency of Patent Owner’s priority assertions...
Common Inventorship And Technology Insufficient For 325(d) Denial

Common Inventorship And Technology Insufficient For 325(d) Denial

by Matthew Johnson | Sep 11, 2023 | 325(d) issues, PTAB News, Trial Institution

By Matt Johnson and Jack Graves— The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had previously...
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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.