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