Brian A. Jones Brian A. Jones

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Brian A. Jones focuses his practice on patent litigation and prosecution. He has industry experience in electronic circuit design, systems integration and quality assurance, spanning the industries of wireless communication systems, electronic control systems and automotive electronics. Brian has represented clients in federal district court actions, inter partes reviews before the US Patent Trial and Appeal Board (PTAB) of the US Patent and Trademark Office (USPTO), Section 337 investigations of the US International Trade Commission, and appeals before the US Court of Appeals for the Federal Circuit. Read Brian A. Jones's bio.

Covered Business Method Threshold Review Is Not Appealable


By on Nov 24, 2020
Posted In America Invents Act, Patents

The US Court of Appeals for the Federal Circuit found that in view of the Supreme Court of the United States’ 2019 decision in Thryv v. Click-to-Call, the Patent Trial and Appeal Board’s threshold determination that a patent qualifies for covered business method (CBM) review is closely tied to the institution decision and is therefore...

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Full of Hot Air? PTAB Joinder Decisions Under § 315(c) Are Appealable


By on Sep 16, 2020
Posted In Patents

Addressing whether it has jurisdiction to review joinder decisions made by the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit reissued a prior decision explaining that a joinder decision is reviewable because the decision occurs after the inter partes review (IPR) proceeding institutes. Facebook, Inc. v. Windy City...

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Federal Circuit Has Jurisdiction over Constitutional Questions in AIA Appeals


By on Sep 2, 2020
Posted In America Invents Act, Patents

Addressing for the first time whether a district court has jurisdiction to hear constitutional challenges to the Patent Trial and Appeal Board’s (Board) final written decisions in an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit found that the Federal Circuit has jurisdiction over AIA appeals, including constitutional questions....

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PTAB May Reject Substitute Claims Under Any Basis of Patentability


By on Aug 5, 2020
Posted In America Invents Act, Patents

The US Court of Appeals for the Federal Circuit considered for the first time whether a district court’s invalidity determination, when made final after all appeals are exhausted, divests the Patent Trial and Appeal Board (PTAB) of jurisdiction in a co-pending inter partes review (IPR) proceeding involving the same claims, and held that it does...

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Delicate Balance: Details of Parallel Proceeding Tip Scales for Discretionary Denial


By on Jul 22, 2020
Posted In America Invents Act, Patents

The Patent Trial and Appeal Board (Board) designated two decisions informative as they relate to weighing factors for determining how a parallel district court proceeding may impact the Board’s determination of whether to discretionarily deny institution under § 314(a). In Apple Inc. v. Fintiv, Inc., Case No. IPR2020-00019, Paper 15 (USPTO May 13, 2020) (Horner, APJ)...

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Stick to Your Guns: PTAB Should Rarely Issue New Grounds of Unpatentability


By on Jul 15, 2020
Posted In Patents

The Patent Trial and Appeal Board (PTAB) Precedential Opinion Panel (POP) issued a precedential opinion in an inter partes review (IPR) to resolve two questions: May the PTAB raise a ground of unpatentability not developed by the petitioner? If it does so, must the PTAB provide the parties notice and an opportunity to respond to...

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Fee Shifting Under § 285 Does Not Apply to Conduct Solely Arising in IPR


By on Jun 10, 2020
Posted In America Invents Act, Patents

Considering for the first time whether fee shifting of § 285 applies to exceptional conduct arising solely from an inter partes review (IPR) proceeding, the US Court of Appeals for the Federal Circuit held that § 285 does not authorize an award of fees based on conduct at the United States Patent and Trademark Office (USPTO) during the course...

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Arthrex Extended to Inter Partes Re-examination


By on May 27, 2020
Posted In America Invents Act, Patents

The US Court of Appeals for the Federal Circuit denied a petition for panel rehearing regarding the constitutionality of decisions issued by the United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB), holding that its decision in Arthrex, Inc. v. Smith & Nephew, Inc. (IP Update, Vol. 22, No. 11) also...

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“Waive” Goodbye to Belated Argument that Administrative Patent Judges’ Appointment is Unconstitutional


By on May 14, 2020
Posted In America Invents Act, Patents

Addressing whether a party can waive a challenge to the constitutionality of Administrative Patent Judges’ (APJs’) appointment, the US Court of Appeals for the Federal Circuit found that the issue is non-jurisdictional and therefore waivable. Ciena Corp. v. Oyster Optics, LLC, Case No. 19-2117 (Fed. Cir. Jan. 28, 2020) (O’Malley, J.) (reissued as precedential May...

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PTAB Time Bar Application in Instituting IPR Proceedings Nonappealable


By on May 7, 2020
Posted In America Invents Act, Patents

Addressing the scope of review of the Patent Trial and Appeal Board’s (PTAB’s) application of the one-year time bar of 35 USC § 315(b) in deciding whether to institute an inter partes review (IPR) proceeding, the Supreme Court of the United States held that application of the time bar by the PTAB is nonappealable. Thryv,...

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