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When Might a PTAB Rehearing Be Granted?

When Might a PTAB Rehearing Be Granted?

by Matthew Johnson | Feb 21, 2024 | PTAB News, Request for Reconsideration

By Sabrina Bellantoni and Matt Johnson – Recently, the Patent Trial and Appeals Board (“PTAB”) granted a request for rehearing of a decision that denied an institution of inter partes review and then instituted a trial on all the challenged claims on all the...
Director Issues Guidance on Use of AI for Documents Submitted to PTAB

Director Issues Guidance on Use of AI for Documents Submitted to PTAB

by Carl Kukkonen | Feb 15, 2024 | PTAB News

By Carl Kukkonen, Stephanie M. Mishaga, and Pranita Dhungana – USPTO Director Katherine K. Vidal issued guidance on February 6, 2024 regarding the use of AI in drafting materials submitted to the USPTO’s administrative boards, including the PTAB.  Of biggest...
Federal Circuit Affirms Claim Construction and How It Applies

Federal Circuit Affirms Claim Construction and How It Applies

by Matthew Johnson | Feb 8, 2024 | Claim Construction, Federal Circuit, PTAB News

By Luke Cipolla, Matt Silveira, and Matt Johnson – In Pacific Biosciences of California, Inc. v. Personal Genomics Taiwan, Inc., the Federal Circuit recently affirmed two PTAB decisions in IPRs filed by Pacific Biosciences of California, Inc. (PacBio) that...
Reverse Engineered Search Insufficient For IPR/PGR Estoppel

Reverse Engineered Search Insufficient For IPR/PGR Estoppel

by Tom Ritchie | Jan 31, 2024 | District Court, Estoppel, PTAB News

By Tom Ritchie – In GeigTech East Bay v. Lutron Electronics, patent owner GeigTech argued that Lutron should be estopped under 35 U.S.C. § 325(e)(2) from asserting two prior art grounds that it said Lutron could have reasonably raised in its post-grant review...
“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial

“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial

by Josh Nightingale | Jan 23, 2024 | Petitions, PTAB News, Trial Institution

By Daniel Sloan and Josh Nightingale – The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023).  There, the PTAB held that (1) a Sotera...
Conception and Reduction to Practice Dates Matter

Conception and Reduction to Practice Dates Matter

by Matthew Johnson | Jan 2, 2024 | Prior Art Issues, PTAB News, PTAB Trial Basics

By Sabrina Bellantoni and Matt Johnson – In a recent decision, the Patent Trial and Appeals Board found that the disputed claims regarding transferring digital content were not unpatentable under 35 U.S.C. § 103(a) after determining that the prior art cited by...
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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.