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PTAB Designates Trial Institution Discretion Cases Informative

PTAB Designates Trial Institution Discretion Cases Informative

by David Maiorana | Apr 16, 2019 | Trial Institution

By Kerry Barrett and Dave Maiorana On April 5, 2019, the PTAB designated as informative two decisions relating to 35 U.S.C. § 314(a): IPR2018-00923, Paper 9 (Nov. 7, 2018) (designated: Apr. 5, 2019) [AIA § 314(a), insufficient number of proposed grounds/challenges to...
Seeing Multiple: Observations from Petitioner Filing Strategies Following SAS

Seeing Multiple: Observations from Petitioner Filing Strategies Following SAS

by Joe Sauer | Apr 5, 2019 | Trial Institution

By Kerry Barrett, David Anderson, and Joe Sauer In April 2018, the United States Supreme Court held that the PTAB must issue a final written decision addressing every patent claim challenged in an IPR petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). In...
PTAB Denies Entire IPR Petition as Voluminous and Excessive

PTAB Denies Entire IPR Petition as Voluminous and Excessive

by Matthew Johnson | Apr 3, 2019 | PTAB Trial Basics, Trial Institution

By Levent Herguner and Matt Johnson In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 314(a) to deny inter partes review of Perfect Company’s (“Patent Owner”) patent.  Adaptics Ltd. v. Perfect Co., IPR2018-01596 (March 6, 2019).  A panel of...
No PTAB Do Over:  After SAS Remand, PTAB Denies All Grounds

No PTAB Do Over: After SAS Remand, PTAB Denies All Grounds

by S. Christian Platt | Feb 21, 2019 | Trial Institution

By Jihong Lou, Christian Platt, and Tom Ritchie Last April, in SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), the Supreme Court held that after instituting an inter partes review, the PTAB must decide the patentability of all of the claims the petitioner has...
All or Nothing: Why the Supreme Court SAS Mandate Does not Eliminate the Shaw Safe Harbor

All or Nothing: Why the Supreme Court SAS Mandate Does not Eliminate the Shaw Safe Harbor

by Matthew Johnson | Feb 18, 2019 | Trial Institution

By Lisa Furby, David Anderson, Mike Lavine, and Matt Johnson Last week the Chicago-Kent Journal of Intellectual Property published a comment prepared by a team of Jones Day attorneys that analyzed whether the PTAB is treating multiple petitions filed against a common...
Overreaching May Result In Denial of Petition

Overreaching May Result In Denial of Petition

by David Cochran | Jan 31, 2019 | PTAB Trial Basics, Trial Institution

By Kait Crowder and Dave Cochran In Deeper, UAB v. Vexilar, Inc., the PTAB recently considered the extent of its discretion to grant or deny inter partes review in a case where a petitioner challenges multiple claims on numerous grounds.  In this case, the petitioner...
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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.