by Matthew Johnson | Jun 21, 2024 | Preliminary Responses, PTAB News, PTAB Trial Basics, Trial Institution
By Dave Cochran and Daniel Sloan – On April 25, 2024, the PTAB denied Masimo Corporation’s (“Petitioner’s”) second petition for inter partes review (“IPR”) against U.S. Patent No. 10,076,257 (the “’257 patent”). Masimo Corp. v. Apple Inc., IPR2024-00071, Paper...
by Matthew Johnson | Jun 4, 2024 | Prior Art Issues, PTAB News, PTAB Trial Basics, Trial Institution
By Sue Gerber and Matt Johnson – Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review. In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent was...
by Matthew Johnson | May 2, 2024 | PTAB News, PTAB Trial Basics, Trial Institution
By Matthew Johnson, Carl Kukkonen, Evan C. Jones, and Daniel Sloan – On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues. The Notice addresses stakeholder...
by Sarah Geers | May 1, 2024 | PTAB Trial Basics, Trial Institution
By Sarah Geers and Daniel Sloan – Director Vidal recently vacated three discretionary denials of institution after finding that the three petitioners did not have a “significant relationship” with a prior petitioner. American Honda Motor Co., Inc. v. Neo...
by Lisa Furby | Apr 12, 2024 | Prior Art Issues, PTAB News, PTAB Trial Basics, Trial Institution
By Lisa Furby – In denying inter partes review in OBM, Inc. & Cholla Energy LLC v. Lancium LLC, the PTAB again made clear that “technical availability” of a reference is not enough to establish it is a printed publication. Here, the PTAB held that the...
by David Maiorana | Apr 11, 2024 | Claim Construction, PTAB News, PTAB Trial Basics, Trial Institution
By Luke Cipolla and Dave Maiorana – On March 7, 2024, the PTAB denied institution in 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024) (“Decision”). The PTAB denied institution on two separate grounds:...
