News & Analysis as of

Subject Matter Experts (SMEs) Inter Partes Review (IPR) Proceeding

Jones Day

Strategic Decision to Forgo Expert Does Not Allow a “Second Bite”

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The PTAB recently denied petitioner’s request for rehearing of a decision denying institution of inter partes review, rejecting the argument that the Board’s denial was based on an erroneous analysis of the “non-exhaustive”...more

Foley & Lardner LLP

Challenging IPR Institutions Following Federal Court Decision in In re: Power Integrations Inc.

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Practitioners should be aware that challenging the PTAB’s decision to deny institution of an IPR got even harder after a recent Federal Circuit decision. While the Supreme Court has already made clear that challenges to...more

Jones Day

Practical Tips from the Judges’ Panel at the PTAB Judicial Conference

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On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more

Jones Day

When is a Conference Paper Publicly Accessible: Lessons Learned

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In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, the PTAB provided new guidance to practitioners regarding the eligibility of conference papers as printed publications for use as prior art references...more

Jones Day

Declarations as New Evidence to Overcome § 325(d)

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We have published other blog postings relating to 35 U.S.C. §325(d), including a blog posting that addresses the PTAB’s October 24, 2017 notice designating three of its decisions as informative (here). Recently, the PTAB...more

McDermott Will & Emery

Person of Skill in Art Depends on Claim Scope

McDermott Will & Emery on

Carl Zeiss SMT GmbH v. Nikon Corp. - The Patent Trial and Appeal Board (PTAB or Board) has explained that arguing a high-level of skill in a narrow art, even in cases involving complex technology, will not exclude an...more

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