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Patent Litigation Patents Denial of Institution

Jones Day

Director Vacates Decision Based on Improper Claim Construction

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The PTAB denied institution of inter partes review reasoning that Petitioner did not demonstrate a reasonable likelihood that Petitioner would prevail in establishing the unpatentability of any of the challenged claims. The...more

Jones Day

Director Vidal Reels In Discretionary Denials Under Section 314(a)

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Under 35 U.S.C. § 314(a), the PTAB has discretion to deny institution of an inter partes review. In certain circumstances, the PTAB will discretionarily deny a petition because another petition challenging the same patent...more

Jones Day

Institution Denied For Lack of Sufficient Structure

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The Board declined to institute inter partes review because Petitioner failed to identify adequate corresponding structure in the challenged patent that performed the function of claim limitation that was to be construed...more

Jones Day

Institution Denial Vacated to Reconsider Prior Art Drawing

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On April 5, 2024, Director Vidal vacated and remanded the Patent Trial and Appeal Board’s (PTAB’s) denial of institution of inter partes review (IPR) where the Petitioner relied on a drawing in a prior art patent document to...more

Jones Day

Forced Cooperation Between Rivals Does Not Create a “Significant Relationship”

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Director Vidal recently vacated three discretionary denials of institution after finding that the three petitioners did not have a “significant relationship” with a prior petitioner. American Honda Motor Co., Inc. v. Neo...more

Jones Day

Institution Denied Based On Written Description in “Alternative Embodiments”

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On September 21, 2023, the PTAB denied United Services Automobile Association’s petition to institute inter partes review of Auto Telematics’s U.S. Patent No. 9,633,487.  IPR2023-00519, Paper 10....more

Jones Day

Failure to Make Full Sotera-Stipulation Contributes to Denial

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In an increasingly rare exercise of discretion, the PTAB denied institution of inter partes review under Fintiv in Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Limited, IPR2023-00587. The PTAB reasoned that...more

Jones Day

Common Inventorship And Technology Insufficient For 325(d) Denial

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The PTAB recently declined to apply Section 325(d) and instituted inter partes review after a patent owner unsuccessfully argued that the petition relied on substantially the same prior art as that which the Office had...more

Akin Gump Strauss Hauer & Feld LLP

USPTO Director: Invalidity Judgment by District Court Does Not Foreclose Inter Partes Review

In a sua sponte review, USPTO Director Kathy Vidal continued her refinement of the PTAB’s “discretionary denial” practice. Specifically, the Director vacated the Board’s decision to deny institution in Volvo Penta of the...more

Morgan Lewis

USPTO Unleashes Wave of PTAB Rule Proposals

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The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more

Hudnell Law Group

Fifth Circuit Denies Patent Owners’ Attempt To Formalize PTAB’s Discretionary Denials

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In 2021, an organization of patent owners and various patent-holding companies sued the USPTO in the Eastern District of Texas.  The patent owners sought to force the USPTO Director to engage in notice-and-comment rulemaking...more

Akin Gump Strauss Hauer & Feld LLP

PTAB Applies Director’s Guidance and Holds that Compelling Evidence of Unpatentability Precludes Fintiv Denial

In an IPR institution decision issued shortly after the USPTO issued interim guidance on discretionary denials, the PTAB held that the petition presented “compelling evidence of unpatentability,” foreclosing a Fintiv...more

Troutman Pepper

Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast

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Please join Troutman Pepper’s Intellectual Property and Health Sciences Practice Group for the second season and first installment of our podcast series focused on strategy, trends, and other happenings at the PTAB. In this...more

Morgan Lewis

PTAB Considers Interim Fintiv Guidance in Refusing to Exercise Discretion to Deny Institution

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The Patent Trial and Appeal Board recently granted the institution of an inter partes review in Samsung Electronics Co. v. Staton Techiya, LLC, despite the existence of a parallel proceeding in the US District Court for the...more

Akin Gump Strauss Hauer & Feld LLP

USPTO: Compelling Evidence of Unpatentability Forecloses Fintiv Denial

The USPTO recently issued new guidance on how the Patent Trial and Appeal Board (PTAB) will apply Apple Inc. v. Fintiv Inc., a 2020 precedential decision which laid out considerations for denying institution of a post-grant...more

Morgan Lewis

USPTO Director Clarifies PTAB’s Application of Fintiv to Limit Discretionary Denials

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The USPTO has issued interim procedures curbing the PTAB’s discretionary denials over post-grant proceedings associated with parallel ITC proceedings or district court litigation. ...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Provides Guidance on PTAB Discretionary Denials of Challenges Based on Parallel Litigation

On June 22, 2022, the U.S. Patent and Trademark Office issued two documents regarding the Patent Trial and Appeals Board's discretionary denials of post-grant challenges based on parallel litigation: a retrospective study of...more

Jones Day

Healthy Overlap Between PTAB And Trial Court Favors Denial

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The PTAB recently denied institution of inter partes review (IPR) for claims 1 and 46 of U.S. 7,464,040 in eClinicalWorks, LLC et al. v. Decapolis Systems, LLC, IPR2022-0229, Paper 10 (PTAB April 13, 2022). The denial was...more

Akin Gump Strauss Hauer & Feld LLP

PGR Challenge to Genus Claims Fails Because of Enabling Disclosure of Species in Pre-AIA Priority Applications

The Patent Trial and Appeal Board has denied institution of a post-grant review proceeding because the petitioner failed to show the challenged patent was eligible for PGR. The PTAB ruled that the petitioner’s evidence,...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Clarifies Scope of IPR Estoppel, Reversing Prior Shaw Decision

The Federal Circuit recently clarified that the scope of IPR estoppel in district courts includes prior art grounds that were raised or reasonably could have been raised in a petition for inter partes review (IPR), reversing...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Mylan Labs. Ltd v. Janssen Pharmaceutica, N.V.,...

Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...more

Jones Day

Fintiv Revisited—District Court Transfer Results in Institution Reversal

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In November 2020, Google LLC filed two petitions requesting an inter partes review of the claims of Ikorongo Technology LLC (“Ikorongo”) owned U.S. Patent No. 8,874,554 (“the ’554 patent”)....more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: In re Vivint, Inc., 14 F.4th 1342 (Fed. Cir. 2021)

Alarm.com filed three petitions for inter partes review (IPR) against Vivint, Inc.’s ’513 patent. The Patent Trial and Appeal Board (Board or PTAB) denied institution of the first two petitions because Alarm.com had failed to...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Jones Day

Rolling The Dice – Discretionary Denial And Forum Selection Clauses

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* The Federal Circuit has just issued an additional decision in this dispute today. We will cover that development further shortly. In a recent decision, the Patent Trial and Appeals Board granted institution of inter...more

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