Discretionary Denial Statistics
By Adam Cook, Daniel Sloan, and Matt Johnson - Since the inception of the bifurcated review process at the PTAB, Jones Day has been analyzing every discretionary decision released by the Office. Deputy Director Coke Morgan Stewart continues to be the key...
USPTO Memorandum Clarifies PTAB’s Treatment of Prior Proceedings
By Pranita Dhungana and Matt Johnson - The United States Patent and Trademark Office (USPTO) recently issued a memorandum addressing how the Patent Trial and Appeal Board (PTAB) should handle prior findings of fact and conclusions of law when adjudicating patent...
Show Me the Evidence: Primary References Still Required after LKQ
By Ernie Oleksy and John Evans - Federal Circuit decisions applying the new standards for design-patent obviousness continue to inform how patent challengers should frame their plans of attack, both in the PTAB and in the courts. In Dynamite Marketing, Inc. v. The...
Federal Circuit Clarifies Independent Conception Standard for AIA Derivation
By Kate Meng and Sarah Geers - More than a decade after the enactment of the America Invents Act (AIA), the Federal Circuit has issued its first opinion addressing an AIA derivation proceeding. In Global Health Solutions LLC v. Selner, the court clarified that in such...
Post-filing Activity May Create Privity Leading To Section 315(b) Dismissal
By Sue Gerber and Matt Johnson - Under Section 315(b), an IPR may be dismissed as time barred “if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with...