Joshua Nightingale

Featured in: Favicon

jdsupra.com Favicon

lexology.com Favicon

mondaq.com

Articles

PTAB Pendulum Swings in Favor of Discretionary Denial | JD Supra

1 month ago | jdsupra.com | Matthew Johnson |Joshua Nightingale |Daniel Sloan

Recent developments at the USPTO suggest a significant shift in favor of the PTAB exercising discretionary denial and uncertainty on behalf of parties to PTAB proceedings. On March 24, 2025, following the February 28, 2025 rescission of former Director Vidal’s June 21, 2022 memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation,” Chief Administrative Patent Judge Scott R.
Director Review: PTAB Must Articulate Bases For Section 325(d) Denial

Apr 15, 2024 | mondaq.com | Ashvi Patel |Joshua 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 patents.
Director Review: PTAB Must Articulate Bases for Section 325(d) Denial | JD Supra

Apr 8, 2024 | jdsupra.com | Joshua Nightingale |Ashvi Patel

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 patents.
"Eleventh Hour" Sotera Stipulation Sufficient To Avoid Denial

Feb 1, 2024 | mondaq.com | Daniel Sloan |Joshua Nightingale

The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023).
“Eleventh Hour” Sotera Stipulation Sufficient to Avoid Denial | JD Supra

Jan 24, 2024 | jdsupra.com | Joshua Nightingale |Daniel Sloan

The PTAB recently declined to exercise its discretion to deny IPR, instituting review in BMW of North America, LLC v. NorthStar Systems LLC, IPR2023-01017, Paper 12 (Dec. 8, 2023).
Director Demonstrates Ability To Review Non-Dispositive PTAB Determinations

Jul 31, 2023 | mondaq.com | Ashvi Patel |Adam Cook |Joshua Nightingale

On May 16, 2023, Director Katherine Vidal vacated a portion of a final written decision regarding real parties in interest ("RPIs") in Unified Patents, LLC v. Memory Web, LLC, IPR2021-01413. Director Vidal held that the Patent Trial and Appeal Board ("PTAB") improperly determined whether Apple and Samsung were RPIs in addition to Petitioner Unified Patents ("Unified") in the inter partes review ("IPR") proceeding.
Insufficient Arguing Below Causes Forfeited Review Above | JD Supra

Jun 13, 2023 | jdsupra.com | Joshua Nightingale

[co-author: Adam Cook]* Absent exceptional circumstances, the Federal Circuit will generally not consider arguments that a party failed to present in the tribunal under review. In Netflix, Inc. v. DivX, LLC, the Federal Circuit held that IPR petitioner Netflix waived its claim construction arguments because it did not sufficiently raise them before the Patent Trial and Appeal Board (“PTAB”). No. 22-1043 (Fed. Cir. Apr. 27, 2023).
Federal Circuit Clarifies Important IPR Estoppel Issues | JD Supra

May 5, 2023 | jdsupra.com | Joshua Nightingale

Under 35 U.S.C. § 315(e)(2), a patent challenger in an inter partes review (IPR) that reaches a final written decision is estopped from arguing in a district court or the ITC that the challenged patent is invalid based on grounds that were “raised or reasonably could have been raised” in the IPR. In Ironburg Inventions Ltd. v.