News & Analysis as of September 24, 2024

America Invents Act › Final Written Decisions

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The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition. less -

PTAB Announces Rules Formalizing Director Review

Jones Day on 4/29/2024

In 2021, following the Supreme Court’s Arthrex decision, the PTO issued an interim procedure for requesting Director Review. The PTO has now issued a Notice of Proposed Rulemaking (“NPRM”) formalizing the Director Review...more

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/21/2024

Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more

2023 PTAB Year in Review: Analysis & Trends: The Staying Power of Fintiv: The Effect of Parallel Litigation at the PTAB in 2023

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/15/2024

In 2023, Fintiv—the precedential Order issued in 2020 that established a six-factor framework that the Patent Trial and Appeal Board (PTAB) applies when evaluating whether to exercise its discretion to institute an America...more

2023 PTAB Year in Review: Editors’ Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/12/2024

A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more

2023 Design Patents Year in Review: Analysis & Trends: PTAB: Design Patents for GUI Interface Cancelled in AIA Proceedings

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2024

All three of the challenges that the Patent Trial and Appeal Board (PTAB) instituted in 2022 resulted in a final written decision canceling the challenged patent. Two of the three final written decisions rendered in 2023 are...more

Issue 43: PTAB Trial Tracker

Goodwin on 1/15/2024

Petitioner Allowed to Proceed in “Understudy Role” - In American Honda Motor Co., Inc. v. Neo Wireless, LLC, IPR2023-0791 (P.T.A.B. March 30, 2023), American Honda Motor Co., Inc. (“Honda”) filed a “copycat” Petition...more

USPTO Says Prior Art Date of AIA Patents is Not Limited By Dynamic Drinkware

Foley & Lardner LLP on 12/21/2023

When Dynamic Drinkware was decided in 2015, commentators debated whether differences in the language of the American Invents Act (AIA) version of 35 USC § 102 would shield AIA patents from its restrictions. Now, U.S. Patent...more

Federal Circuit Affirms PTAB’s Ruling of Swearing Behind a Prior Art Reference

Sheppard Mullin Richter & Hampton LLP on 12/18/2023

In Medtronic, Inc., Medtronic Vascular, Inc. v. Teleflex Innovations S.A.R.L., the case addresses whether the final written decisions in a consolidated inter partes appeal (“IPR”) correctly found that U.S. Patent 7,736,355...more

Deadline Dexterity: PTAB Has Authority to Issue Decisions After Statutory Deadline

Proskauer - Minding Your Business on 12/11/2023

Recently, in Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc., the Federal Circuit held for the first time that the Patent Trial and Appeal Board (“the Board”) has the authority to issue a Final Written Decision even...more

Delay Is Okay: Final Written Decisions Can Be Issued After Statutory Deadline

McDermott Will & Emery on 11/30/2023

In a matter of first impression, the US Court of Appeals for the Federal Circuit concluded that the Patent Trial & Appeal Board has the authority to issue a final written decision (FWD) in a post-grant review (PGR) proceeding...more

Distinguishing Drinkware—Provisional Priority Determined Differently in Pre- and Post-AIA Patents

McDermott Will & Emery on 11/30/2023

In a precedential final written decision, the Patent Trial & Appeal Board concluded that a patent does not need to contain a claim supported by a provisional application’s disclosure to draw priority to that provisional for...more

USPTO Confirms Different Frameworks for Pre-AIA and Post-AIA Prior-Art Determinations

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 11/20/2023

On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more

2022 Post-Grant Annual Report

Fish & Richardson on 3/2/2023

2022 was a milestone year for the Patent Trial and Appeal Board. In April, Kathi Vidal began her tenure as Director of the United States Patent and Trademark Office with an early focus on promoting increased efficiency at the...more

2022 Design Patents Year in Review: Analysis and Trends: PTAB: Odds of Escaping Challenges Remain Steady for Design Patents,...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/23/2023

In 2022, the Patent Trial and Appeal Board (PTAB) did not issue any final written decisions involving design patents. However, it did issue three decisions granting review of challenged design patents and three decisions...more

Review Delayed Is Not Review Denied

McDermott Will & Emery on 2/17/2023

Considering whether the US Patent & Trademark Office (PTO) Director must complete review of the Patent Trial & Appeal Board’s (Board) inter partes review (IPR) decision within the statutory deadline for a final written...more

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

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

Last Week In The Federal Circuit (August 22 – August 26): To Appeal Or Not To Appeal, That Is The Question

Morrison & Foerster LLP - Federal Circuitry on 8/31/2022

If you don’t appeal an issue from an adverse judgment, are you going to be bound by the decision on that issue in future cases? This can often be an important question to consider when deciding whether and what issues to...more

Click-to-Call Technologies LP v. Ingenio, Inc. (Fed. Cir. 2022)

McDonnell Boehnen Hulbert & Berghoff LLP on 8/24/2022

For most of the past decade, the Supreme Court has been marking out the metes and bounds of the Patent Trial and Appeal Board's execution of the post-grant review provisions of the Leahy-Smith America Invents Act,...more

2021 PTAB Year in Review: Analysis & Trends: Biologics at the PTAB: Statistics and Insights into Notable Biologics Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/24/2022

In June 2021, the US Patent and Trademark Office (USPTO) published an update to its study of America Invents Act (AIA) trials involving challenges to Orange Book-listed and biologic patents from September 16, 2012, through...more

2021 PTAB Year in Review: Analysis & Trends: Editors' Introduction

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/8/2022

Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more

2021 PTAB Year in Review: Analysis & Trends

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/7/2022

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

2022 IP Outlook Report: The Developments Shaping Patent Law

McDermott Will & Emery on 2/18/2022

KEY TAKEAWAYS AND OUTLOOK FOR 2022 - Tracking with this era’s continuation and uncertainty trends―global supply chain disruption, innovation outpacing legislation, the unstoppable internet of [all the] things (IoT)―2022 is...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Mylan Labs. Ltd v. Janssen Pharmaceutica, N.V.,...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/17/2022

Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...more

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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2022

[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

Qiagen North America Holdings Inc. v. Handylab, Inc. (Fed. Cir. 2021)

McDonnell Boehnen Hulbert & Berghoff LLP on 11/12/2021

The inter partes review (IPR) provisions of the Leahy-Smith America Invents Act have been castigated by many for the propensity of the Patent Trial and Appeal Board (PTAB) to find claims challenged in these proceedings to be...more

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America Invents Act › Final Written Decisions

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