News & Analysis as of

Patent Litigation Patent Trial and Appeal Board Judicial Discretion

Jones Day

Subsequent Challenge Does Not Justify Discretionary Denial

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In a recent decision, Acting Director Coke Morgan Stewart denied a Patent Owner’s request for discretionary denial in LifeVac, LLC v. DCSTAR, Inc., IPR2025-00454. Even though Petitioner had previously challenged the same...more

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Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion

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Partners Matt Johnson and Sarah Geers talk about former USPTO Director Andrei Iancu's impact on the PTAB, and what we might expect from a new director under the Biden Administration. They also comment on why patent litigation...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - January 2021: Petitioner's District Court Stipulation Results in PTAB Trial Institution Under the...

In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation), where the Board instituted trial, i.e., did not exercise its...more

Farella Braun + Martel LLP

Impacts of Recent PTAB Precedential Opinions Addressing Its Discretion to Reject Petitions for Review of Issued Patents

The Patent Trial and Appeal Board (PTAB) recently designated two more opinions as “precedential” dealing with its discretion to reject petitions for inter partes review (IPR) or similar post-grant reviews. Under 35 U.S.C. §...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - March 2020 #2

PATENT CASE OF THE WEEK - Communication Test Design, Inc. v. Contec, LLC, Appeal No. 2019-1672 (Fed. Cir. March 13, 2020) - This week’s Case of the Week explores two important procedural issues: a court’s discretion to...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - February 2020

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Sheppard Mullin Richter & Hampton LLP

Caution to Game Companies: PTAB Continues to Preclude PTAB Challenges That It Views As Untimely

In a proceeding that included Patent Office Director Andrei Iancu on the panel, the PTAB issued an order this past week denying institution of 3 IPRs filed by Valve. The decision demonstrates that the PTAB continues to...more

Jones Day

PTAB Designates Three Informative Opinions Which Address 35 U.S.C. § 325(d)

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On October 24th, the PTAB issued the following notice, designating the following decisions, which address 35 U.S.C. § 325(d), as informative....more

Jones Day

PTAB Sheds Light on Role of Prior Art in Discretionary Denial

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The Patent Trial and Appeal Board (PTAB) recently designated as informative three cases involving discretionary denial of inter partes review under 35 U.S.C. § 325(d). We previously profiled the case of Hospira, Inc. v....more

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PTAB Decision Provides Guidance On Using Art Previously Considered By The Office

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On October 24th, the PTAB designated three decisions related to discretionary petition denials under 35 U.S.C. § 325(d) as informative. Unified Patents, Inc. v. Berman is discussed below. We previously reported on Hospira,...more

WilmerHale

Federal Circuit Patent Updates - June 2016

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Cuozzo Speed Technologies, LLC v. Lee (No. 2015-446, 6/20/16) (Roberts, Kennedy, Thomas, Ginsburg, Breyer, Alito, Sotomayor, Kagan) - June 20, 2016 12:49 PM - Breyer, J. Affirming Federal Circuit decision that the...more

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