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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

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

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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