News & Analysis as of September 20, 2024

Administrative Proceedings

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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 Proposes Rules Governing Director Review of PTAB Decisions

Venable LLP on 5/6/2024

On April 16, 2024, the PTAB proposed new rules (“proposed rules”) governing the Director Review process, which would remain consistent with the Interim review process currently in place, and codify those procedures....more

PTAB Eliminates POP Review and Expands Director Review to Institution Decisions

Venable LLP on 8/2/2023

As of July 24, 2023, the United States Patent and Trademark Office (USPTO) revised the interim Director Review process and replaced the Precedential Opinion Panel (POP) with the Appeals Review Panel process, which will review...more

USPTO Provides Interim Guidance on PTAB Discretionary Denials Under Fintiv

Stinson LLP on 6/23/2022

On June 22, 2022, the U.S. Patent and Trademark Office (USPTO) announced new interim guidance regarding discretionary denials of patent challenges at the Patent Trial and Appeal Board (PTAB) based on parallel litigation. The...more

Fed. Cir. Rejects New IPR Constitutional Challenges

Jones Day on 10/26/2021

In Mobility Workx, LLC v. Unified Patents, LLC, the Federal Circuit in a split decision concluded that Mobility Workx, LLC’s constitutional challenges to structure and funding of the Patent Trial and Appeal Board (“PTAB”) are...more

Federal Circuit Holds That the PTAB Does Not Have an Impermissible Incentive to Institute IPRs

Knobbe Martens on 10/14/2021

MOBILITY WORKX, LLC v. UNIFIED PATENTS, LLC Before Newman, Schall, and Dyk. Appeal from the Patent Trial and Appeal Board. Summary: Fee-funded structure of AIA review proceedings does not violate due process....more

Navigating IPRs and other AIA Reviews as Power Shifts to the USPTO Director

Akerman LLP on 8/11/2020

America Invents Act Reviews, or "AIA Reviews" are administrative proceedings which can be used to seek the invalidity of a U.S. Patent. After their creation in 2011, AIA reviews have become an important component of patent...more

The PTAB and the Arthrex Decision: A Constitutional Question

Polsinelli on 12/4/2019

The Appointments Clause of the U.S. Constitution1 provides that “principal officers” of the United States must be appointed by the President upon the advice and consent of the Senate. “Inferior officers,” on the other hand,...more

State Universities Are Not Immune From Challenges to Their Patents at the USPTO

Sunstein LLP on 8/8/2019

Under constitutional principles of United States law, states generally enjoy sovereign immunity. This immunity, enshrined in the 11th amendment of the US Constitution, bars private parties from bringing lawsuits against the...more

Inter Partes Review of Pre-AIA Patents is Constitutional

Troutman Pepper on 8/1/2019

Celgene Corp. v. Peter, Appeal Nos. 2018-1167, -1168, -1169 (Fed. Cir. July 30, 2019) - Celgene owned two patents that pertained to methods of safely distributing potentially hazardous drugs. The patents were challenged...more

PTAB Strategies and Insights - June 2019

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/21/2019

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Oil States Energy Servs., LLC v. Green’s...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/19/2019

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Supreme Court ruled that inter partes reviews (IPRs) do not improperly divest the courts of their judicial authority and do not violate the Seventh...more

Observations: Five Months After Supreme Court SAS Institute

Jones Day on 10/25/2018

As an update to the May 15, 2018 post, available here, some post-SAS trends appear to be taking shape. For the five-month period from May 2018 through September 2018, the PTAB issued 538 institution decisions. Of these, the...more

PTAB Abandons Its Practice Of Broadly Interpreting Claims Of Challenged Patents In Favor Of Phillips Standard Of “Ordinary And...

Troutman Pepper on 10/12/2018

In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) has...more

USPTO Changes Claim Construction Standard Used In AIA Trial Proceedings

Shook, Hardy & Bacon L.L.P. on 10/12/2018

On October 10, 2018, the United States Patent & Trademark Office (USPTO) published a final rule that changes the current “broadest reasonable interpretation” or BRI standard used in inter partes review (IPR), post grant...more

When SCOTUS Said No Partial Institution, It Meant All Challenged Grounds

McDermott Will & Emery on 8/29/2018

In light of the Supreme Court of the United States decision in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), the US Court of Appeals for the Federal Circuit remanded an appeal from the Patent Trial and Appeal Board...more

Winner’s Playbook: Behind The Scenes Of The SAS Case

Jones Day on 6/18/2018

On April 24, 2018, in SAS Institute Inc. v. Iancu, a closely divided U.S. Supreme Court fundamentally changed the way that the Patent Trial and Appeal Board confronts inter partes reviews under the America Invents Act. The...more

SAS "Ground" Rules

Foley & Lardner LLP on 6/18/2018

In a quartet of recent decisions, the Federal Circuit has confirmed that SAS Institute extends beyond mandating the inclusion of all claims when trial is instituted, and extends to all grounds as well. These decisions confirm...more

Chief Judge Guidance: SAS Impact, Motions to Amend, and Claim Construction

Jones Day on 6/11/2018

On June 5, 2018, Chief Judge David Ruschke and Vice Chief Judge Tim Fink of the Patent Trial and Appeals Board (PTAB) participated in a webinar providing new guidance on three topics: (1) the new claim construction standard...more

Observations: Three Weeks After Supreme Court’s SAS Institute Decision

Jones Day on 5/16/2018

Anyone reading this post is likely well aware that on April 24 the Supreme Court put an end to the PTAB’s practice of instituting inter partes review (IPR) on less than all claims challenged in an IPR petition in SAS...more

SAS Institute Follow-Up: New PTAB Procedures and Strategies

Latham & Watkins LLP on 5/11/2018

The PTAB’s new guidance in light of a recent Supreme Court ruling changes the dynamics for patent owners and petitioners. Key Points: ..Partial institutions are no longer permitted. The PTAB will review all petitioned...more

Patent System after Oil States and SAS – What’s the future?

Foley & Lardner LLP on 5/7/2018

On April 24th, the Supreme Court decided two important cases related to the United States Patent & Trademark Office’s inter partes review (IPR) proceedings for reconsidering the prior grant of a patent – Oil States Energy...more

Supreme Court Affirms Constitutionality of Inter Partes Review

Bradley Arant Boult Cummings LLP on 5/1/2018

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the Supreme Court rejected constitutional challenges to the America Invents Act’s inter partes review process. The court held that inter partes review (IPR)...more

[Webinar] Supreme Court Issues Decisions in Oil States and SAS Cases: A Discussion of the Impact on Patent Law and Inter Partes...

BakerHostetler on 5/1/2018

This timely and fast-moving webinar provides insight for business leaders and legal counsel on the recently issued Supreme Court decisions in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute...more

Stayin' alive: What’s next for IPRs after Oil States and SAS

Eversheds Sutherland (US) LLP on 4/30/2018

On April 24, 2018, the US Supreme Court decided two important cases that directly impact inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB), and patent litigation as a whole. In Oil States Energy...more

Two Supreme Court Patent Opinions and a Memo from the PTO

Mintz - Intellectual Property Viewpoints on 4/27/2018

On Tuesday, the U.S. Supreme Court issued two important patent law opinions that relate to the inter partes review procedure introduced by the America Invents Act: Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC,...more

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America Invents Act › Inter Partes Review (IPR) Proceeding › Administrative Proceedings

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