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PTAB Amendments May Address More Than Pending Unpatentability Grounds

PTAB Amendments May Address More Than Pending Unpatentability Grounds

by John Marlott | Jan 5, 2023 | Amendment Practice, PTAB News, PTAB Trial Basics

By Sachin Patel and John Marlott – The Federal Circuit has upheld the PTAB’s relatively liberal approach to proposed claim amendments in an IPR, holding that so long as a proposed substitute claim includes an amendment made in response to an...
PTAB Reiterates Requirements for Additional Discovery

PTAB Reiterates Requirements for Additional Discovery

by Carl Kukkonen | Dec 21, 2022 | Discovery, District Court, PTAB News

By Carl Kukkonen – The PTAB in a recent PGR proceeding: SWM International, LLC et al v. DynaEnergetics Europe GmbH (PGR2021-00097), reiterated the requirements for additional discovery.  In particular, in this matter, the petitioner, having access to excerpts...
Invalidation Of Patent Deemed Not To Moot IPR

Invalidation Of Patent Deemed Not To Moot IPR

by Matthew Johnson | Dec 13, 2022 | Final Written Decisions, Motions Practice, PTAB News

By Annie Scantling, Robby Breetz, Matt Johnson –  A PTAB panel recently denied Linquet Technologies, Inc.’s (“Patent Owner”) motion to dismiss an IPR proceeding as moot despite a district court having already invalidated the patent because the final written...
Presenting Complicated Technology Effectively at the PTAB

Presenting Complicated Technology Effectively at the PTAB

by Matthew Johnson | Dec 8, 2022 | PTAB News, PTAB Trial Basics

Jesse Wynn, Robert Breetz, Matt Johnson – The PTAB recently hosted a Boardside Chat on effectively presenting technology in AIA proceedings. Patent Trial and Appeal Board Boardside Chat: Presenting Technology in AIA Proceedings, (Nov. 17, 2022) (“Presenting...
Ex Parte Reexamination Barred Based on Earlier IPR

Ex Parte Reexamination Barred Based on Earlier IPR

by Josh Nightingale | Dec 5, 2022 | Estoppel, PTAB News

By Dhohyung Kim and Josh Nightingale – On November 16, 2022, the United States Patent and Trademark Office (“PTO”) vacated a reexamination proceeding because the patent challenger relied on unpatentability grounds that reasonably could have been raised in an...
Limited Stipulation Results In Fintiv Denial

Limited Stipulation Results In Fintiv Denial

by Matthew Johnson | Dec 1, 2022 | PTAB News, Trial Institution

By Ashvi Patel and Matt Johnson – Patent Owner, IP Bridge, filed a patent infringement suit against Petitioner, Ericsson, for infringement of seven of its patents directed at radio communication between a base station and a mobile station and related apparatuses...
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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.