PTAB Provides Notice Of Sua Sponte Motion to Amend Ground
By Sarah Brickey and Matt Johnson - The precedential ruling in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, IPR2018-00600, Paper 67 (PTAB July 6, 2020) allows the Patent Trial and Appeals Board (PTAB) to raise an issue regarding substitute claims that was not...
Institution Mandamus Review Limited to Colorable Constitution Claims
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 mandamus...
JONES DAY TALKS®: Patent Litigation, PTAB, Iancu’s Legacy, and Institution Discretion
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 COVID-19,...
Creative COVID-Time Deposition Procedure
By Alex Li and Matt Johnson - Depositions for proceedings before the Patent Trial and Appeal Board (PTAB) are usually taken in the U.S. See 37 C.F.R. § 42.53(b)(2), (b)(3). Furthermore, many foreign jurisdictions have restrictions on taking depositions within their...
District Court Indefiniteness Ruling Leads to Denial
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...