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Petitioner’s Proof of Printed Publication Falls Short

Petitioner’s Proof of Printed Publication Falls Short

by Matthew Johnson | Mar 12, 2025 | Evidentiary Issues, Prior Art Issues, Trial Institution

By Mike Lavine – On February 6, 2025, the PTAB denied IPR institution because the Petitioner failed to establish that its key prior art reference qualified as a printed publication under Section 102(b). The PTAB’s decision hinged on whether the “Dammann”...
PTAB Rescinds Discretionary Denial Memorandum

PTAB Rescinds Discretionary Denial Memorandum

by Matthew Johnson | Mar 3, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Ashvi Patel and Matt Johnson – On Friday, the USPTO rescinded its June 21, 2022, guidance memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation.”  That memorandum discussed...
PTAB Denies Motion for Joinder After Unsuccessful District Court Invalidity Challenge

PTAB Denies Motion for Joinder After Unsuccessful District Court Invalidity Challenge

by David Maiorana | Jan 31, 2025 | Joinder, PTAB News, Time Limits, Trial Institution

By David Linden and Dave Maiorana – On June 6, 2024, Shenzhen Waydoo Intelligence Technology Co., Ltd. (“Waydoo”) filed a petition for inter partes review (“IPR”) of U.S. Patent No. 9,359,044 (“the ’044 Patent”) (“IPR998”), assigned to MHL Custom, Inc. (“MHL”). ...
Similar Claims in Prior IPR Petition Leads to Denial

Similar Claims in Prior IPR Petition Leads to Denial

by Matthew Johnson | Jan 28, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Derek Walker, Evan Tassis, and Matt Johnson – The PTAB recently denied institution of inter partes review of a patent directed to deep packet inspection in software defined networks in Juniper Networks, Inc. v. Orckit Corporation, IPR2024-00895. Applying the...
Two Many IPRs: Different References Insufficient for Parallel IPRs

Two Many IPRs: Different References Insufficient for Parallel IPRs

by Matthew Johnson | Jan 22, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Pranita Dhungana and Matt Johnson – The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent.   Shenzhen Root Tech....
Prior Art Asserted in Second Petition Should Have Been Asserted in the First

Prior Art Asserted in Second Petition Should Have Been Asserted in the First

by Emily Tait | Jan 13, 2025 | PTAB News, PTAB Trial Basics, Trial Institution

By Adriane Elinski and Emily Tait – The PTAB denied institution of a second inter partes review (“IPR”) petition filed by Aylo Freesites (“Petitioner”) after having previously instituted inter partes review of Petitioner’s first petition related to the same...
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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.