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Inter Partes Review (IPR) Proceeding Priority Patent Claims Patent Litigation

Jones Day

PTAB Decides Concurrent IPR and PGR Petitions After Resolving Priority Date Dispute

Jones Day on

In anticipating a dispute over whether the America Invents Act would apply, Petitioner MPL Brands NV, Inc. (“MPL”) filed concurrent petitions for both inter partes review and post-grant review of U.S. Patent No. 11,932,441...more

McDermott Will & Emery

[Ongoing Program] PTAB Session: Strategic Considerations Before Filing IPR Petitions - April 21st, 10:00 am - 11:00 am JST

We are committed to providing insightful commentary on IP developments from around the world to our Japanese clients. In light of that effort, we are continuing our free monthly webinar series, McDermott IP Focus. During...more

McDermott Will & Emery

Arthrex, Still Without Director Review, Gets Constitutional Review from Patent Commissioner

A panel of the US Court of Appeals for the Federal Circuit considered whether the Patent Commissioner, on assuming the role of the US Patent & Trademark Office (PTO) Director, can constitutionally evaluate the rehearing of...more

Jones Day

PGR Estoppel Continues to be Broad and Onerous

Jones Day on

An ITC Administrative Law Judge (ALJ) recently issued an initial determination holding that PGR estoppel prevented GMG Products LLC (Respondent) from raising two prior-art products in the ITC....more

Jones Day

Section 325(d) – Twelfth Time Not A Charm

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This blog has previously discussed PTAB’s exercise of discretion under Section 325(d). Sometimes the PTAB has invoked Section 325(d) to deny institution; sometimes it has declined to apply Section 325(d) and instituted inter...more

McDermott Will & Emery

IPR on Written Description? Claims Found Unpatentable Based on Lack of Entitlement to Priority Date

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) ruling, based on a written description analysis, that certain claims were invalid as anticipated by an earlier priority...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Patent Owner’s Burden Regarding a Showing of Priority Is Strictly Circumscribed by the Extent of Petitioner’s Challenge in...

A petition for inter partes review (IPR) has been denied because the petitioner failed to rebut the patent owner’s claim of priority raised in its preliminary response. In denying institution, the Patent Trial and Appeal...more

Akin Gump Strauss Hauer & Feld LLP

Priority Dispute Is Not Carte Blanche to Challenge Same Patent with Multiple IPR Petitions

A panel at the Patent Trial and Appeal Board (the “Board”) recently considered whether a dispute over a patent’s priority date justified filing two petitions for inter partes review (IPR) against the same claims. The...more

Jones Day

PTAB Rules Certificate of Correction is Not Retroactive in IPR

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On remand from the Federal Circuit, the PTAB ruled that a patentee’s certificate of correction—issued after the Board invalidated the claims in a final written decision—could not be applied retroactively. After the IPR...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Correction to Claim of Priority Has No Impact Following a Final Written Decision in an IPR

A panel at the Patent Trial and Appeal Board (PTAB) recently held that a certificate of correction fixing an error in a patent’s claim of priority did not apply retroactively in light of an already issued final written...more

WilmerHale

Federal Circuit Patent Updates - August 2018

WilmerHale on

Ericsson Inc. v. Intellectual Ventures I LLC (No. 2017-1521, 8/27/18) (Reyna, Taranto, Chen) Reyna, J. - Vacating and remanding the PTAB’s IPR decision because the PTAB erred in not considering portions of the petitioner’s...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Relies on Priority Analysis in a Related Proceeding in Denying IPR

The Patent Trial and Appeal Board (PTAB) recently denied institution of an inter partes review (IPR), holding that the patent at issue had an effective filing date antedating the primary prior art reference. The...more

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