PTAB Designates Precedential Decision Relating to Infringer’s Civil Action Barring IPR
By Geoffrey Gavin and Matt Johnson The PTAB designated as precedential a January 2019 panel decision relating to the bar on instituting an IPR under 35 U.S.C. § 315(a)(1) when the petitioner previously filed a civil action challenging the validity of the patent. See...
Strategic Decision to Forgo Expert Does Not Allow a “Second Bite”
By Emily Tait The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive” General Plastic factors. See...
Jones Day’s PTAB Litigation Blog – The Story and Rationale
Jones Day's PTAB Litigation Blog launched August 19, 2015. 428 posts later, it has become one of the most widely recognized and read PTAB practice blogs in existence. Jones Day partners Dave Cochran and Matt Johnson talk about the history and rationale for the blog...
Decision to Deny Institution not Reviewable Despite Prior PTAB Trial
By Marc Blackman In a split decision, the Federal Circuit dismissed three consolidated appeals holding that the PTAB’s decisions to deny institution were not appealable even though the PTAB previously had instituted the IPRs and proceeded through trial. BioDelivery...
Federal Court Relies on PTAB Findings in Denying Section 101 Summary Judgment Motion
By Olivia Pedersen and Dave Maiorana Despite the prohibition on patenting "abstract ideas" and the tendency of computer software claims to fall into that category, claims directed at improving faulty software systems may still be patentable if they encompass an...