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Fintiv Discretionary Denials Remain In Play

Fintiv Discretionary Denials Remain In Play

by Matthew Johnson | Jun 2, 2022 | PTAB News, Trial Institution

By Hannah Mehrle and Matt Johnson – F5 Networks, Inc. (“Petitioner”) filed a Petition requesting an IPR.  WSOU Investments, LLC d/b/a/ Brazos Licensing and Development (“Patent Owner”) filed a Preliminary Response.  Here, the PTAB exercised its discretion under...
Derivation Decision Offers Several Reminders for Petitioners

Derivation Decision Offers Several Reminders for Petitioners

by Sarah Geers | Apr 27, 2022 | PTAB News, Trial Institution

By Sarah Geers – The PTAB recently issued a rare decision instituting a derivation proceeding, in Global Health Solutions LLC v. Selner, DER2017-00031 (“GHC”).  The GHC institution decision provides several lessons for future petitioners looking to avoid...
PTAB Denies Joinder Motion Filed More Than One Month After PGR Institution

PTAB Denies Joinder Motion Filed More Than One Month After PGR Institution

by Matthew Johnson | Apr 6, 2022 | Joinder, PGR, Trial Institution

By Christian Roberts and Matt Johnson – Typically, a Motion for Joinder to an earlier post-grant review (“PGR”) must be filed within one month of the institution of the earlier PGR.  37 C.F.R. § 42.222(b).  While the Patent Trial and Appeal Board (“PTAB”) does...
Petition Survives Word Count Complaint And Request for Withdrawal

Petition Survives Word Count Complaint And Request for Withdrawal

by Matthew Johnson | Apr 1, 2022 | PTAB Trial Basics, Trial Institution

By Akosua Kyereme-Tuah, Mike Lavine, and Matt Johnson – The PTAB recently denied a motion to dismiss a Revised Petition and terminate an inter partes review (IPR) proceeding despite Petitioner’s alleged withdrawal of the Original Petition and failure to comply...
Fintiv Revisited—District Court Transfer Results in Institution Reversal

Fintiv Revisited—District Court Transfer Results in Institution Reversal

by David Maiorana | Feb 15, 2022 | Request for Reconsideration, Trial Institution

By David Linden and Dave Maiorana – In November 2020, Google LLC filed two petitions requesting an inter partes review of the claims of Ikorongo Technology LLC (“Ikorongo”) owned U.S. Patent No. 8,874,554 (“the ’554 patent”).  Separate petitions were filed to...
Section 325(d) – Twelfth Time Not A Charm

Section 325(d) – Twelfth Time Not A Charm

by Matthew Johnson | Jan 19, 2022 | Trial Institution

By Sue Gerber and Matt Johnson – This blog has previously discussed PTAB’s exercise of discretion under Section 325(d).  Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d) and instituted inter...
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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.