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PTAB Forgives MTA Procedural Error

PTAB Forgives MTA Procedural Error

by Matthew Johnson | Aug 5, 2024 | Amendment Practice, Federal Circuit Appeal, Motions Practice, PTAB News

By Tova Werblowsky and Matt Johnson – The Federal Circuit affirmed in part, reversed-in-part and remanded-in-part the Board’s decision in the inter partes review of U.S. Patent No. 8,265,096 (the “’096 patent”), and affirmed the Board’s decision as to the cross...
Shifting Burden Dooms Patent Owner

Shifting Burden Dooms Patent Owner

by Matthew Johnson | Jun 14, 2024 | Evidentiary Issues, Final Written Decisions, Prior Art Issues

By Hailey Stewart,* Evan Tassis and Matt Johnson – In a Final Written Decision, the PTAB declared claims of a patent unpatentable after finding the patent was not entitled to the earlier priority date of the anticipatory reference in Platinum Optics Technology,...
Institution Denied Based On Written Description in “Alternative Embodiments”

Institution Denied Based On Written Description in “Alternative Embodiments”

by Evan McLean | Nov 29, 2023 | Prior Art Issues, PTAB News, Trial Institution

By Evan Jones and Evan McLean – On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487.  IPR2023-00519, Paper 10. The ’487 patent relates generally...
Provisional Describes “Incompressible Solid” Despite Disclosure Of “Little” Compression

Provisional Describes “Incompressible Solid” Despite Disclosure Of “Little” Compression

by Albert Liou | Aug 1, 2023 | Prior Art Issues, PTAB News, Trial Institution

By Albert Liou – In a recent decision denying institution, the PTAB rejected Petitioner Mercedes Benz USA’s argument that the challenged patent was not entitled to the filing date of its provisional application.  Mercedes-Benz USA, LLC v. Westport Fuel Systems...
Director Provides Insight On Interplay Between Written Description And Enablement

Director Provides Insight On Interplay Between Written Description And Enablement

by Matthew Johnson | Apr 5, 2023 | 325(d) issues, PGR, Trial Institution

By Levent Herguner and Matt Johnson – USPTO Director Kathi Vidal recently vacated a PTAB decision denying institution of a post-grant review and remanded the case for further proceedings.  The petitioner challenged claims 1–27 of the ’274 patent under 35 U.S.C....
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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.