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DON’T SAVE THE BEST: FEDERAL CIRCUIT CONFIRMS BROAD IPR ESTOPPEL

DON’T SAVE THE BEST: FEDERAL CIRCUIT CONFIRMS BROAD IPR ESTOPPEL

by Matthew Johnson | Feb 22, 2022 | Estoppel, Federal Circuit Appeal

By Ana Teixeira and Matt Johnson – The patent fight between Caltech and Broadcom/Apple made waves this month when the Federal Circuit vacated the $1.1 billion infringement award that Caltech had won in district court. To PTAB practitioners, however, the sea...
CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

CAFC Holds Applicant Admitted Prior Art Cannot be the Basis of an IPR Ground

by Matthew Johnson | Feb 10, 2022 | Federal Circuit, Prior Art Issues, PTAB News

By Robby Breetz, Christian Roberts, and Matt Johnson – Section 311(b) limits inter partes review to “ground[s] that could be raised under section 102 or 103 and only on the basis of prior art consisting of patents or printed publications.”  35 U.S.C. § 311(b)...
Fed. Cir. Rejects PTAB Decision on Mystery Shopper Patent; Returns to Sender

Fed. Cir. Rejects PTAB Decision on Mystery Shopper Patent; Returns to Sender

by Carl Kukkonen | Nov 1, 2021 | Federal Circuit Appeal, Trial Institution

By Carl Kukkonen – The Federal Circuit in AMC Multi-Cinema, Inc. v. Fall Line Patents (Fed. Circ. September 30, 2021, op. 21-1051) held that the PTAB partially abused its discretion when upholding one claim of U.S. Patent No. 9,454,748 for which the patent owner...
Fed. Cir. Rejects New IPR Constitutional Challenges

Fed. Cir. Rejects New IPR Constitutional Challenges

by Jennifer Chheda, Ph.D. | Oct 26, 2021 | Federal Circuit Appeal, PTAB News

By: Jennifer J. Chheda – In Mobility Workx, LLC v. Unified Patents, LLC, the Federal Circuit in a split decision concluded that Mobility Workx, LLC’s constitutional challenges to structure and funding of the Patent Trial and Appeal Board (“PTAB”) are without...
Fed. Cir. Directs Dismissal of Ex Parte Reexam

Fed. Cir. Directs Dismissal of Ex Parte Reexam

by Jennifer Chheda, Ph.D. | Oct 15, 2021 | Federal Circuit Appeal, PTAB News

By Jennifer Chheda – On September 29, 2021, the Federal Circuit in In re: Vivint, Inc. (Fed. Cir. 2021) held that 35 U.S.C. § 325(d) applies to both inter partes review (IPR) petitions and requests for ex parte reexamination.  Accordingly, the Federal Circuit...
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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.