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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...
District Court Indefiniteness Ruling Leads to Denial

District Court Indefiniteness Ruling Leads to Denial

by Matthew Johnson | Mar 19, 2021 | PTAB Trial Basics, Trial Institution

By Sachin Patel and Matt Johnson – The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite. On June...
Apple v. Iancu: Oral Argument on Motion to Dismiss and Plaintiff Summary Judgment Motion

Apple v. Iancu: Oral Argument on Motion to Dismiss and Plaintiff Summary Judgment Motion

by Michael Oblon | Mar 16, 2021 | PTAB News, Trial Institution

By Nick Bagnolo and Michael Oblon – Since the PTAB designated Apple v. Fintiv precedential, the six-factor, “holistic” test has been increasingly used to discretionarily deny institution of petitions challenging claims already subject to parallel litigation...
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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.