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Adverse Judgments Patent Litigation Patents

Jones Day

Director Says Not Filing Mandatory Notices and POPR Does Not Justify Adverse Judgment

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In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

Akin Gump Strauss Hauer & Feld LLP

Withholding Data That PTAB Would Deem Relevant to Patentability Supports Adverse Judgment in an IPR

The Patent Trial and Appeal Board (PTAB) granted Petitioner’s motions to sanction Patent Owner for failure to meet its duty of candor and fair dealing in five related inter partes review  proceedings. The PTAB found that...more

Akin Gump Strauss Hauer & Feld LLP

USPTO Director: Adverse Judgment Not Appropriate Where There Was No 'Unequivocal' Abandonment

The USPTO Director recently conducted sua sponte review of a Patent Trial and Appeal Board decision granting adverse judgment in four IPR proceedings where a panel found that the patent owner had abandoned the contests. In a...more

Jones Day

PTAB Declines To Enter Adverse Judgment Against Pre-Institution Disclaimed Claims

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Although the Federal Circuit had previously held that the PTAB may enter adverse judgment when a patent owner disclaims all claims challenged in an inter partes review (“IPR”) petition before an institution decision, in...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Arthrex, Inc. v. Smith & Nephew, Inc., 880...

Smith & Nephew petitioned for inter partes review (IPR) of Arthrex’s patent. After the petition was filed, but before the Board issued an institution decision, Arthrex statutorily disclaimed all the challenged claims under 37...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Jones Day

Failure to Refute Challenges to Real Parties-in-Interest Terminates 3 IPR Proceedings

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In prior blog posts, we have commented on PTAB decisions terminating IPR proceedings due to the Petitioner’s failure to identify all real parties-in-interest. See blog posts on Sanction For Failing to Update Real Party In...more

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