Patent Trial and Appeal Board, Patent Ownership, Denial of Institution

Institution Denied For Lack of Sufficient Structure

Jones Day on 5/17/2024

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

Institution Denial Vacated to Reconsider Prior Art Drawing

Jones Day on 5/10/2024

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

Institution Denied Based On Written Description in “Alternative Embodiments”

Jones Day on 11/30/2023

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

Failure to Make Full Sotera-Stipulation Contributes to Denial

Jones Day on 11/13/2023

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

Common Inventorship And Technology Insufficient For 325(d) Denial

Jones Day on 9/12/2023

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

Tip #1 for Avoiding IPR Institution: Litigation Venue Selection

Mintz - Intellectual Property Viewpoints on 10/30/2020

Venue selection is a critical component to any patent enforcement strategy, even before the inception of the PTAB as we know it today. Venue now has even greater importance, as the speed of your patent case (i.e. time to...more