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Patent Litigation General Plastic Factors

Jones Day

General Plastic Factors Lead to Institution Denial

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The Patent Trial and Appeal Board (PTAB) in Videndum Production Solutions, Inc. v. Rotolight Limited (IPR2023-01219), recently denied a petition for inter partes review (IPR) of a patent on a lighting system and control for...more

Hudnell Law Group

Serial IPR Petitions No Longer Doomed By A Double Dose Of Discretionary Denial

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Gen. Plastic Indus. Co. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017), designated precedential in 2017, sets forth seven factors to be considered before discretionarily denying subsequent IPR...more

Jones Day

Follow-On Petitions Must Be Justified and Timely

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The PTAB recently held that the General Plastic factors weighed in favor of denying a follow-on IPR petition filed after the Patent Owner filed a preliminary response to an earlier petition challenging the same patent (U.S....more

Jones Day

Multiple-Petition Strategies Fall Into Disfavor

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The results of a recent update to the PTAB Multiple Petition Study show Petitioners face an uphill battle when attempting to utilize a multiple petition strategy. These results, discussed during the December 10, 2020...more

Jones Day

PTAB Designates RPI, Follow-On Petition Cases Precedential

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On December 4th, the PTAB designated the following three cases precedential: RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020) (precedential) - This decision on remand from the...more

Womble Bond Dickinson

Proposed Alternative PTAB Discretionary Denial Analysis in View of Serial Petitions

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In 2012, Congress enacted the American Invents Act (“AIA”) for the purpose of “establish[ing] a more efficient and streamlined patent system that will improve patent quality and limit unnecessary and counterproductive...more

Haug Partners LLP

The Recent Rise of Discretionary Denials at the Patent Trial and Appeal Board

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The rate at which the Patent Trial and Appeal Board (“PTAB” or “Board”) institutes Petitions for Inter Partes Review (“IPR”) has been in steady decline since the introduction of the IPR procedure in 2013, and is expected to...more

Jones Day

Joinder Bid After Prior Petition Denial Fails

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After being sued by Uniloc in April 2018 for infringement of U.S. Patent No. 6,467,088 (“Reconfiguration Manager for Controlling Upgrades of Electronic Devices”), Apple challenged claims 1-21 of that patent at the PTAB in...more

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

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more

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