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Prior Art Trial Practice Guidance United States Patent and Trademark Office

Jones Day

Two Many IPRs: Different References Insufficient for Parallel IPRs

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The Patent Trial and Appeal Board (“PTAB”) recently denied institution in an inter partes review (“IPR”) where Petitioner later filed a parallel petition against the same claims of the same patent.   Shenzhen Root Tech. Co.,...more

Knobbe Martens

USPTO Publishes PTAB Trial Practice Guide Update

Knobbe Martens on

On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more

Knobbe Martens

Discretionary Denial as a Case Management Tool: PTAB Requires Petitioner to Rank its Six IPR Petitions by Merit and then...

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Following the Supreme Court’s decision in SAS v. Iancu, which held that an IPR institution is an “all-or-nothing” proposition, the PTAB lost its ability to rely on “partial institutions” as a case management tool (e.g., by...more

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