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

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Carl Kukkonen – 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 producing cinematic lighting effects.  The PTAB exercised its discretion under 35 U.S.C. § 314(a) and 37 C.F.R § 42.108(a) to reject the petition, which was the second one filed by the same petitioner against the same patent.  The PTAB applied the factors set forth in General ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Luke Cipolla and Dave Maiorana – On February 20, 2024, the Supreme Court denied Liquidia Technologies’ petition for a writ of certiorari to review a precedential Federal Circuit decision, United Therapeutics Corp. v. Liquidia Techs., Inc., 74 F.4th 1360 (Fed. Cir. 2023). Supreme Court of United States Docket No. 23-804. In the petition, Liquidia argued that a PTAB written decision should block liability of infringement in parallel district court litigation, even while pending appeal. See Petition for Writ of Certiorari, L ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Jareli Reynoso Gutierrez and Carl Kukkonen – Recently, the Court of Appeals for the Federal Circuit reversed one and vacated another Patent Trial and Appeal Board (“PTAB”) final written decision in which the PTAB determined that Weber Inc. (“Weber”) failed to demonstrate that certain patent claims related to food slicers owned by Provisur Technologies, Inc. (“Provisur”) were invalid. Weber v. Provisur Technology, Nos. 2022-1751, 2022-1813 (Fed. Cir. February 8, 2024). The Federal Circuit held that substantial evidence sup ..read more

Visit Jones Day's PTAB Litigation blog at www.ptablitigationblog.com. By Owen Carpenter, Lisa Furby, and Dave Maiorana – Director Vidal recently issued sanctions against OpenSky Industries (“OpenSky”) for attempted extortion during settlement negotiations and abuse of the IPR process for US Patent 7,725,759 and awarded $413,264.15 to VLSI Technology LLC (“VLSI”). Previously, (as we covered here), Director Vidal determined that OpenSky “abused the inter partes review process in an attempt to extract payment from both Patent Owner VLSI and Petitioner Intel, who was joined to the proceeding.” As ..read more