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Sotera Stip Results in Institution Despite Co-Pending ITC Case

Sotera Stip Results in Institution Despite Co-Pending ITC Case

by Matthew Johnson | Jul 2, 2021 | Trial Institution

By Andrea Beathard and Matt Johnson – A Sotera-style stipulation has once again convinced the PTAB to not exercise its discretion to deny institution of inter partes review (“IPR”) under 35 U.S.C. § 314(a).  In Ocado Group PLC v. AutoStore Technology AS,...
PTAB Declines to Exercise Discretion Post-Markman

PTAB Declines to Exercise Discretion Post-Markman

by Matthew Johnson | Jun 16, 2021 | Trial Institution

By Hannah Mehrle and Matt Johnson – Petitioner (Apple, Inc.) filed a petition to institute inter partes on a patent owned by Koss Corporation (Patent Owner).  The PTAB considered six factors from Fintiv to assess whether to exercise authority to deny institution...
Awkwardly Divided Petitions Triggers § 314(a) Denials

Awkwardly Divided Petitions Triggers § 314(a) Denials

by Matthew Johnson | Jun 8, 2021 | Petitions, Trial Institution

By Ashvi Patel,* Marlee Hartenstein, and Matt Johnson In Fantasia Trading LLC v. Cognipower LLC, IPR2021-00070, Paper 21 (May 20, 2021), the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) where Petitioner Fantasia Trading LLC...
Thin Fintiv Factor Four Stipulation Sufficient For Institution

Thin Fintiv Factor Four Stipulation Sufficient For Institution

by Matthew Johnson | May 18, 2021 | Trial Institution

By Zach Sharb and Matt Johnson – On April 30, 2021, the PTAB instituted IPR trials based on petitions by Facebook, Inc. (“Petitioner”) challenging certain claims of U.S. Patent No. 8,645,300 (“300 Patent”), owned by USC IP Partnership, L.P. (“Patent Owner”) and...
Institution Mandamus Review Limited to Colorable Constitution Claims

Institution Mandamus Review Limited to Colorable Constitution Claims

by David Maiorana | Mar 25, 2021 | Federal Circuit Appeal, Trial Institution, Uncategorized

By Robby Breetz and Dave Maiorana – In Mylan Labs Ltd. v. Janssen Pharmaceutica N.V., the Federal Circuit reaffirmed it lacked jurisdiction over appeals from the PTAB denying IPR institution, noted that it had jurisdiction over requests for mandamus, but that...
JONES DAY TALKS®: Patent Litigation, PTAB, Iancu’s Legacy, and Institution Discretion

JONES DAY TALKS®: Patent Litigation, PTAB, Iancu’s Legacy, and Institution Discretion

by Matthew Johnson | Mar 25, 2021 | PTAB News, Trial Institution

Partners Matt Johnson and Sarah Geers talk about former USPTO Director Andrei Iancu’s impact on the PTAB, and what we might expect from a new director under the Biden Administration. They also comment on why patent litigation filings remained active during...
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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.