Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Matthew Johnson, Carl Kukkonen, Evan C. Jones, and Daniel Sloan – On April 19, 2024, the USPTO issued a Notice of Proposed Rulemaking (the “Notice”) regarding discretionary denial in post-grant proceedings and other issues.  The Notice addresses stakeholder feedback responsive to the USPTO’s October 2020 Request for Comments and its April 2023 Advance Notice of Proposed Rulemaking (covered here).  Topics include a new procedure for patent owners to request discretionary denial, institution of serial and parallel ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Sarah Geers and Daniel Sloan – 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 Wireless LLC, IPR2023-00797, Paper 27 (Mar. 22, 2024); see also IPR2023-00962; IPR2023-00763.  The PTAB applies seven non-exclusive factors from General Plastic Indus. Co., Ltd. v. Canon Kabushiki Kaisha, IPR2016-01357, Paper 19 (PTAB Sept. 6, 2017) to determine w ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By: Lisa Furby, Marlee Hartenstein, Stephanie M. Mishaga and Robby Breetz – In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review (discussed here).  The PTO has now issued a Notice of Proposed Rulemaking (“NPRM”) formalizing the Director Review process.  The NPRM outlines various proposed rules governing Director Review including specifying when such review can be requested, the timing and format of a party’s request, the interplay between reques ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Jack Graves and Matt Johnson – The PTAB recently denied Trend Micro, Inc.’s (Petitioner) inter partes review petition against Open Text, Inc. and Webroot, Inc. (Patent Owners) challenging all claims of U.S. Pat. No. 8,201,243. Trend Micro, Inc. v. Open Text, Inc., IPR2023-01390, Paper 17 (PTAB Feb. 14, 2024). Specifically, the PTAB found that a primary reference included in every ground was commonly owned by the same person (Webroot), and therefore 35 U.S.C. § 103(c)(1) disqualified this reference as prior art. Id. at 8 ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Lisa Furby – In denying inter partes review in OBM, Inc. & Cholla Energy LLC v. Lancium LLC, the PTAB again made clear that “technical availability” of a reference is not enough to establish it is a printed publication.  Here, the PTAB held that the petitioner failed to show that one of its prior art references, a copy of a standard rates schedule governing the sale of electricity in Virginia (the “APC-Tariff” reference”), qualified as a printed publication.  The patent at issue, U.S. Patent No. 10,608,433 ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Luke Cipolla and Dave Maiorana – On March 7, 2024, the PTAB denied institution in 10x Genomics, Inc. v. President and Fellows of Harvard College, IPR2023-01299, Paper 15 (PTAB Mar. 7, 2024) (“Decision”). The PTAB denied institution on two separate grounds: (1) the Petitioner, 10x Genomics, did not properly assert a Section 112(f) construction in the alternative in its Petition under 37 C.F.R. § 42.104(b)(3); and (2) the circumstances of a parallel U.S. District Court of Delaware proceeding called for a discretio ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Ashvi Patel and Josh Nightingale – Director Vidal recently vacated the Patent Trial and Appeal Board’s (PTAB) decision to deny institution of three petitions for inter partes review (IPR), citing insufficient explanation for denial under 35 U.S.C. §325(d).  Specifically, Director Vidal held that the PTAB’s institution decision did not adequately address Petitioner’s contention that there were material differences between the arguments made in its Petition and those considered during examination of the disputed patent ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Sue Gerber and Matt Johnson – It goes without saying that claim construction is an important issue, but the PTAB’s recent decision in Netflix, Inc. v. DIVX, LLC, IPR2020-00558, Paper 66 (PTAB Feb. 22, 2024), shows not only that reasonable minds can differ about the proper construction of patent claims, but also that different interpretations can result in conflicting patentability determinations. The Netflix IPR was filed in 2020.  The challenged patent claimed a playback device for playing protected content from sev ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Christian Roberts, and Daniel Sloan, and Matt Johnson – On March 4, 2024, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) regarding Motion To Amend (“MTA”) Practice and Procedures in Trial Proceedings under the America Invents Act (“AIA”) before the PTAB.  The USPTO proposes to revise its rules of practice to permanently incorporate the MTA Pilot Program.  This program allows for the issuance of preliminary guida ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Owen Carpenter and Kenny Luchesi – The PTAB recently denied Intel’s (Petitioner) parallel IPR petition (IPR2023-01140) against AX Wireless (Patent Owner) challenging certain claims of U.S. Pat. No. 10,917,272. The denial came after Intel filed a separate petition (IPR2023-01139) challenging different claims of the ’272 patent the day before it filed the -01139 petition, which was granted. The ’272 patent relates to an OFDM communication environment having header repetition. The ’272 patent further describes various way of ..read more