News & Analysis as of September 21, 2024

America Invents Act › Intel

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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 Clarifies Claim Preclusion Standards

Jones Day on 7/21/2023

On June 2, 2023,the PTAB held the standard enunciated in Astoria Federal Sav. & Loan Ass’n v. Solimino, 501 U.S. 104 (1991) applies to claim preclusion determinations. This was yet another decision in the ongoing battle...more

Patent Poetry: PTAB: Claim Preclusion Doesn’t Apply to IPR Proceedings

AEON Law on 4/26/2023

The Patent Trial and Appeal Board (PTAB) has denied VLSI’s motion to terminate Intel’s involvement in an inter partes review (IPR) of a VLSI patent. VLSI and Intel are engaged in a legal war across several jurisdictions....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

Silicon Valley Challenges the PTAB’s NHK-Fintiv Rule: Can IPRs Be Denied Based on Non-Statutory Factors?

Rothwell, Figg, Ernst & Manbeck, P.C. on 9/11/2020

Last week, four major technology companies – Apple, Cisco, Google, and Intel – brought suit against the United States Patent and Trademark Office (“USPTO”), challenging its authority to reject petitions for inter...more

Statute Permits Domestic Discovery for Foreign Opposition Proceedings - Akebia Therapeutics, Inc. v. FibroGen, Inc.

McDermott Will & Emery on 9/1/2015

With ample citation to Supreme Court precedent, the U.S. Court of Appeals for the Ninth Circuit affirmed the use of 28 U.S.C. § 1782 to conduct domestic discovery in aid of foreign opposition proceedings at the European and...more

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