Since its inception in 2012, the Patent Trial and Appeal Board (PTAB) has invalidated a slew of patents in inter partes review (IPR), leading some to characterize the nascent body as the “patent death squad.” As such,...more
Like a lizard shedding its tail to avoid capture, patent owners continue to escape Covered Business Method (CBM) proceedings by disclaiming claims clearly directed to financial products or services. Despite growing tension...more
In McRO v. Bandai, the Federal Circuit provides particular guidance and clarity on the issue of preemption, which it describes as “The concern underlying the exceptions to § 101.” In addition to providing another guidepost...more
In just its second opinion upholding claims under Alice v. CLS Bank, the Federal Circuit has interpreted Alice in a manner that could save a “substantial class” of inventions from the strikingly-high invalidity rate under the...more
To fix clerical or typographical errors, patent owners typically file a request for a certificate of correction with the U.S. Patent and Trademark Office (USPTO). However, during an inter partes review (IPR) proceeding, the...more
To invalidate a patent as obvious, a prior art reference often must be modified to incorporate the teachings of another prior art reference. However, the Supreme Court has held that the obviousness analysis must include some...more
35 U.S.C. § 315(b) bars petitions for an inter partes review that are filed “more than one year after the date on which the petitioner, real party in interest or privy of the petitioner is served with a complaint alleging...more
Inter partes review (IPR) proceedings allow a party “the petitioner” to challenge the patentability of an issued patent. However, failure comes with a price: 35 U.S.C. § 315(e) bars the petitioner from any future invalidity...more
The Patent Trial and Appeal Board (PTAB) has been notoriously shutting down attempts to amend claims during inter partes review proceedings, leading one Federal Circuit judge to remark that the option to amend “thus far...more
Properly prepared patent assignments and IP assignment clauses in employment agreements can play a critical role in an IPR proceeding — for example, by preventing your own patent applications from becoming invalidating prior...more
While claim charts are often used to compare prior art to challenged patent claims, simply submitting those claim charts as part of a petition to the Patent Trial and Appeal Board (PTAB), without more, could lose your case....more
The Patent Trial and Appeal Board (PTAB) continues to strictly enforce its rule that "parties are not permitted to raise new arguments at oral hearing," including in situations where the "new" arguments are provided as a...more