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Road Mapping Leads to Dead End

On April 25, 2024, the PTAB denied Masimo Corporation’s (“Petitioner’s”) second petition for inter partes review (“IPR”) against U.S. Patent No. 10,076,257 (the “’257 patent”). Masimo Corp. v. Apple Inc., IPR2024-00071,...more

Legislation: Restoring the America Invents Act

On Wednesday, September 29, 2021, Senators Patrick Leahy (D) and John Cornyn (R) introduced the Restoring the America Invents Act, a bill that would modify Patent Trial and Appeal Board (PTAB) procedures and facilitate...more

Court Awards Domino’s Extra Dough

Hot out of the oven!  In a rare move, a district court recently gave Domino’s a two-for-one deal on attorney’s fees.  In Ameranth, Inc., v. Domino’s Pizza Inc., No. 12CV0733 DMS (WVG), 2021 WL 2550057 (S.D. Cal. June 21,...more

Arthrex: Unreviewable APJ Authority Incompatible with Appointments Clause

In United States v. Arthrex Inc., the U.S. Supreme Court agreed with the Federal Circuit that the pre-Arthrex Patent Trial and Appeal Board (PTAB) regime of Administrative Patent Judge decisions being insulated from executive...more

PRECEDENTIAL: Stipulation Roadmap for Fintiv Factor Four

It has now been more than seven months since the PTAB designated Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), as a precedential decision. Under this precedent, the PTAB applies a six factor,...more

Focus on Fintiv Factor Four

In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more

Lights Out For Solar Cell Follow-On Petition

The PTAB denied institution of a follow on petition filed five months after an initial petition by the same petitioner, even though the two petitions were directed to different claims. The Board found no persuasive...more

JONES DAY TALKS®: PTAB Litigation Blog Reaches 500 Posts ... and the PTAB Reacts to COVID-19 [Audio]

As Jones Day's PTAB Litigation Blog marks its 500th posting, Dave Cochran and Matt Johnson discuss current patent litigation developments, near-term trends, and how the PTAB is handling cases during the COVID-19 lock down....more

Same or Similar Art Mutes IPR Petition on Medical Device Patent

35 U.S.C. § 325(d) gives the PTAB discretion to deny a petition for inter partes review when the same or substantially the same prior art or arguments were previously before the Office – including during original examination,...more

JONES DAY TALKS®: Appointments of PTAB Judges Ruled Unconstitutional ... What Now? [Audio]

In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit has held that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board ("PTAB") were in violation of the Appointments Clause of the U.S....more

325(d) And Printed Publication Issues Doom Petition

The most persuasive IPR petitions offer fresh unpatentability theories never considered before. But petitions that simply repackage old issues often don’t gain traction. So, when you’re citing prior art that was before the...more

Reexamination Does not Reset the IPR Clock

In Apple v. IXI IP, the PTAB affirmed that the issuance of a reexamination certificate adding additional claims to a challenged patent does not reset the one-year time bar under § 315(b) to file a petition for inter partes...more

Jones Day Talks: PTAB's Busy Docket and What's Changed After SAS Institute [Audio]

Jones Day's Dave Cochran and Matt Johnson discuss recent developments in patent litigation and appeals, including the continuing importance of the PTAB as a jurisdiction of first choice for patent disputes in the United...more

Precedential Opinion Panel On Printed Publications

Inter Partes review can only be based on prior art consisting of patents or printed publications. 35 USC 311(b). Patents are easy to spot because they are issued by a governmental authority of some sort, but whether something...more

No Motivation to Combine May Not End the Obviousness Inquiry

In Polygroup Limited MCO v. Willis Electric Company, Ltd., the Federal Circuit reversed and remanded the PTAB’s findings of patentability in light of several obviousness arguments presented by the petitioner, concluding that...more

Indefiniteness Again Leads To Unsuccessful IPR Challenge

The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other unpatentability grounds,...more

Petitioner’s Reply May Expand Presented Arguments and Address New Claim Constructions

On August 27, 2018, the Federal Circuit vacated and remanded the PTAB’s finding that claims 1-3, 6-9, and 12-14 of U.S. Patent No. 5,602,831 (“the ’831 Patent”) are not unpatentable under 35 U.S.C. § 103. See Ericsson Inc. v....more

Claim Constructions Under the Broadest Reasonable Interpretation Standard Must be Reasonable

On July 13, 2018, the Federal Circuit reversed the PTAB’s finding that claims 1-5 and 11 of U.S. Patent No. 8,651,118 (“the ’118 Patent”) are anticipated.by U.S. Patent No. 4,148,330 (“Gnaga”) and Japanese Application No....more

Winner’s Playbook: Behind The Scenes Of The SAS Case

On April 24, 2018, in SAS Institute Inc. v. Iancu, a closely divided U.S. Supreme Court fundamentally changed the way that the Patent Trial and Appeal Board confronts inter partes reviews under the America Invents Act. The...more

Use Caution When Considering Multiple IPRs Against a Single Patent

The recent PTAB order in IPR2017-01427 is a cautionary tale for petitioners considering multiple IPRs against a single patent. On May 11, 2017, Facebook and WhatsApp filed the ’1427 IPR petition challenging claims 1-8 of U.S....more

No Genuine Issue of Fact Where Petitioner’s Claim Construction Is Wrong

The PTAB’s recent decision denying rehearing in United Microelectronics Corp. v. Lone Star Silicon Innovations LLC, IPR2017-01513, Paper 10 (PTAB May 22, 2018) sheds light on the Board’s practice under 37 C.F.R. 42.108(c),...more

Not So Secondary: Overcoming Obviousness With Objective Indicia

On April 2, 2018, the PTAB issued a final written decision in Fox Factory finding that the petitioner failed to carry its burden in showing the instituted claims were unpatentable as obvious. Fox Factory, Inc. v. SRAM, LLC,...more

Unsupported Assertions: Expert’s Persuasive Authority Suffers Without Directly Engaging Claim Limitations

An expert asserting that a patent claim reciting different features than the prior art is nonetheless “equivalent” to the prior art must address and account for the recited limitations head-on, or otherwise lose persuasive...more

Anticipation Requires More Than A Reference That Discloses All The Elements

In Microsoft Corp. v. Biscotti, Inc., Nos. 2016-2080, -2082, -2083, 2017 WL 6613262 (Fed. Cir. Dec. 28, 2017), a divided Federal Circuit panel affirmed the Patent Trial and Appeal Board’s decision that Microsoft failed to...more

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