Jon Wright on Post-Grant Review

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

2/8/2023 / § 314(d) , § 315(b) , 35 U.S.C. §315(e)(1) , Abuse of Discretion , Administrative Patent Judges , Administrative Procedure Act , America Invents Act , Anticipation , Apple , Appointments Clause , Arbitrary and Capricious , Arthrex Inc v Smith & Nephew Inc , Article III , Artificial Intelligence , Broadcom , Burden of Persuasion , Burden of Production , Confidentiality Agreements , Consent Order , Constitutional Challenges , Covenant Not to Sue , Director of the USPTO , Doctrine of Equivalents , Estoppel , Evidence , Ex Partes Reexamination , Expert Testimony , Failure To Disclose , Federal Vacancies Reform Act , Final Written Decisions , Forum Selection , Google , Indefiniteness , Intel , Intellectual Property Litigation , Intellectual Property Protection , Inter Partes Review (IPR) Proceeding , International Trade Commission (ITC) , Inventions , Inventors , Joint Inventors , Jurisdiction , Lack of Jurisdiction , Likelihood of Confusion , Motion to Amend , Motion to Terminate , Obviousness , Obviousness-Type Double Patenting (ODP) , Parallel Proceedings , Patent Act , Patent Applications , Patent Infringement , Patent Invalidity , Patent Litigation , Patent Prosecution , Patent Trial and Appeal Board , Patent-Eligible Subject Matter , Patents , Post-Grant Review , Preliminary Injunctions , Preponderance of the Evidence , Prior Art , Qualcomm , Real Party in Interest , Remand , Section 101 , Section 112 , Separation of Powers , Standing , Statutory Authority , Sua Sponte , Substantial Evidence , Testimony , Time-Barred Claims , Trademark Application , Trademark Infringement , Trademark Litigation , Trademark Registration , Trademark Trial and Appeal Board , Trademarks , USPTO , Vacated , Written Descriptions

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

2/9/2022 / § 314(d) , 35 U.S.C. §315(e)(1) , Absolute Intervening Rights Doctrine , Abuse of Discretion , Administrative Patent Judges , Administrative Procedure Act , America Invents Act , Appeals , Appointments Clause , Arbitrary and Capricious , Article of Manufacture , Assignor Estoppel , Burden of Proof , Claim Construction , Collateral Estoppel , Commercial Success , Confidential Information , Constitutional Challenges , Demand Letter , Denial of Institution , Design Patent , Director of the USPTO , Dismissals , Doctrine of Prosecution Disclaimer , Due Process , Equitable Estoppel , Estoppel , Evidence , Ex Partes Reexamination , Executive Branch , Executive Powers , Federal Rules of Evidence , Final Written Decisions , Forum Selection , FRCP 52(c) , GATT , Inferior Officers , Intellectual Property Litigation , Intellectual Property Protection , Inter Partes Reexamination , Inter Partes Review (IPR) Proceeding , International Trade Commission (ITC) , Intervening Acts , Inventions , Issue Preclusion , Judicial Review , Lack of Authority , Lack of Jurisdiction , Likelihood of Success , Minerva Surgical Inc. v Hologic Inc. , Motion for Summary Judgment , Motivation to Combine , Nexus , Non-Disclosure Agreement , Nonobvious , Obviousness , Ornamental Design , Parallel Proceedings , Patent Applications , Patent Filings , Patent Infringement , Patent Litigation , Patent Prosecution , Patent Trial and Appeal Board , Patent Validity , Patents , Petition for Writ of Certiorari , Pharmaceutical Patents , Post-Grant Review , Pre-GATT , Preliminary Injunctions , Principle Officers , Printed Publications , Prior Art , Real Party in Interest , Remand , Reversal , Rule 36 , Scope of Review , SCOTUS , Section 325(d) , Sua Sponte , Substantial Evidence , Totality of Evidence , United States v Arthrex Inc , USPTO , Vacated , Writ of Mandamus

PTAB Strategies and Insights - May 2021

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Introduction

Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to largely continue its operations....more

2/3/2021 / Administrative Patent Judges , Appeals , Certiorari , Constitutional Challenges , Estoppel , International Trade Commission (ITC) , Judicial Review , Patent Litigation , Patent Trial and Appeal Board , Patents , Post-Grant Review , Precedential Opinion , Real Party in Interest , United States v Arthrex Inc , USPTO , Waivers

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

2/3/2021 / Abbreviated New Drug Application (ANDA) , Adidas , Administrative Law Judge (ALJ) , Administrative Patent Judges , Administrative Proceedings , America Invents Act , Appeals , Appointments Clause , Certiorari , Claim Construction , Comcast , Constitutional Challenges , Corporate Counsel , Covenant Not to Sue , Denial of Certiorari , Dismissals , Due Process , Estoppel , Evidence , FanDuel , Final Written Decisions , Google , Hewlett-Packard , Hulu , Inter Partes Reexamination , International Trade Commission (ITC) , Judicial Review , Lack of Authority , Motion to Amend , Nike , Obviousness , Oral Argument , Patent Applications , Patent Infringement , Patent Invalidity , Patent Litigation , Patent Trial and Appeal Board , Patents , Post-Grant Review , Precedential Opinion , Real Party in Interest , Section 337 , Subject Matter Jurisdiction , Thryv Inc v Click-To-Call Technologies LP , Time-Barred Claims , United States v Arthrex Inc , USPTO

Federal Circuit Interprets SAS as Applying to Claims and Grounds

In the wake of the Supreme Court’s decision in SAS Institute v. Iancu—which did away with the Patent Trial and Appeal Board’s (PTAB) partial-institution practice—parties and the Patent Office alike have been trying to...more

6/11/2018 / Administrative Procedure , Appeals , Final Written Decisions , Mootness , Partial Institution , Patent Trial and Appeal Board , Patents , Post-Grant Review , Revival , SAS Institute Inc. v Iancu

Supreme Court Upholds IPR as a Valid Procedure for Challenging Patent Validity: Majority Reasons that Patents are Revocable...

By a majority of 7-2, the Supreme Court has ruled that inter partes review is a valid exercise of statutory authority vested in the Patent Trial and Appeal Board. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,...more

4/25/2018 / Article III , Constitutional Challenges , Due Process , Franchises , Inter Partes Review (IPR) Proceeding , Oil States Energy Services v Greene's Energy Group , Patent Validity , Patents , Post-Grant Review , Private Property , SCOTUS , Seventh Amendment , Takings Clause

Supreme Court to Review the Constitutionality of AIA Patent Review Proceedings

Yesterday, the Supreme Court granted certiorari in a case that may have profound implications for U.S. patent law by abolishing inter partes reviews at the U.S. Patent & Trademark Office (USPTO). In Oil States Energy...more

6/13/2017 / Administrative Proceedings , America Invents Act , Article III , Certiorari , Constitutional Challenges , Covered Business Method Proceedings , Inter Partes Review (IPR) Proceeding , Oil States Energy Services v Greene's Energy Group , Patent Invalidity , Patents , Post-Grant Review , Private Property , Public Property , Right to a Jury , SCOTUS , Seventh Amendment , USPTO

Perspectives On The PTAB - Inaugural Issue

We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter...more

7/8/2016 / Admissible Evidence , America Invents Act , Appeals , Covered Business Method Proceedings , Declaration , Estoppel , Evidence , Expert Witness , Inter Partes Review (IPR) Proceeding , Patent Infringement , Patent Litigation , Patent Trial and Appeal Board , Patents , Post-Grant Review

USPTO makes changes to AIA post grant proceedings

The U.S. Patent and Trademark Office will be making a series of rule changes to America Invents Act reviews. Some will be effective immediately, others will be implemented in phases. The rule changes are a direct response to...more

4/20/2015 / Additional Discovery , America Invents Act , Certifications , Claim Construction , Evidence , Motion to Amend , Patents , Post-Grant Review , Real Party in Interest , Rule 11 , Testimony , Trial Practice Guidance , USPTO

Jon Wright

Sterne, Kessler, Goldstein & Fox P.L.L.C.

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