News & Analysis as of

America Invents Act Patent Trial and Appeal Board

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... more +
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 -

Federal Circuit PTAB Appeal Statistics – July 2017

by Finnegan – AIA Blog on

Through July 1, 2017, the Federal Circuit decided 224 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 168 (75%) cases, and reversed or vacated the PTAB on every issue in 22 (9.82%)...more

The Federal Circuit Clarifies Notice Requirements in AIA Trials

In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., No. 2016-1984 (Fed. Cir. 2017), the Federal Circuit faulted the Patent Trial and Appeal Board (“PTAB”) for violating the Administrative Procedure Act (“APA”) in an...more

Does IPR Extinguish Private Property Rights?

by McDermott Will & Emery on

The Supreme Court of the United States granted certiorari to decide whether only Art. III federal courts, not executive branch tribunals such as the Patent Trial and Appeal Board (PTAB), can decide whether a patent is...more

No Post-Grant Review Where Challenged Claims Are Disclaimed

by McDermott Will & Emery on

Addressing whether disclaimer of all challenged claims prior to institution of post-grant review constitutes a request for adverse judgment, the Patent Trial and Appeal Board (PTAB) found that it did not and denied the...more

PTAB Discretion, Petitions Reliant on Prior Art Cited During Prosecution

by McDermott Will & Emery on

In three recent cases, the Patent Trial and Appeal Board (PTAB) addressed arguments pertaining to when and how it should exercise its discretion to deny some or all grounds for unpatentability in an inter partes review (IPR)...more

Patent Owner Statements in IPR May Result in Prosecution Disclaimer

by McDermott Will & Emery on

Addressing for the first time the issue of whether statements made during America Invents Act post-grant proceedings can trigger a prosecution disclaimer, the US Court of Appeals for the Federal Circuit upheld the district...more

Senate’s STRONGER Patents Act Aims to Address Key PTAB Patent Owner Woes

by Jones Day on

On June 21, Senators Chris Coons (D-Del), Tom Cotton (R-Ark), Dick Durbin (D-Ill), and Mazie Hironoa (D-Hawaii) introduced the “Support Technology & Research for Our Nation’s Growth and Economic Resilience Patents Act of...more

IPR and CBM Statistics for Final Written Decisions Issued in May 2017

by Finnegan – AIA Blog on

The Patent Trial and Appeal Board issued 41 Final Written Decisions in May. It was a relatively patentee-friendly month, with the Board cancelling 269 (48.04%) of the instituted claims while declining to cancel 287 (51.25%)...more

Federal Circuit Puts the Brakes on PTAB Final Written Decision For Procedural APA Violation

In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant...more

STRONGER Patents Act Proposes Substantial Changes to AIA Trial Proceedings

On September 21, 2017, Senator Chris Coons (D-Del.) introduced the STRONGER Patents Act of 2017 in the Senate. STRONGER is an acronym for “Support Technology and Research for Our Nation’s Growth and Economic Resilience.” The...more

Patent Legislation on the Hill: Senators Introduce the STRONGER Patents Act of 2017

by Ropes & Gray LLP on

Although the America Invents Act was enacted less than six years ago, the appetite for intellectual property legislation in D.C. has continued unabated over the last several years. In addition to the recent Defend Trade...more

An Early Look at the Impact of Oil States

On June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Servs. LLC v. Greene’s Energy Grp., LLC, No. 16-712 (U.S. Jun. 12, 2017). The Supreme Court will review whether the Constitution permits the PTAB, a...more

US: Supreme Court takes up constitutionality of inter partes review

by Hogan Lovells on

On June 12, 2017, the Supreme Court granted certiorari to decide the constitutionality of inter partes review, a proceeding before the Patent Trial and Appeals Board (PTAB) that allows third parties, typically alleged...more

Supreme Court to Review Whether PTAB Must Address All Issues Raised in IPR Petition

by McDermott Will & Emery on

Echoing Judge Newman’s dissent in the US Court of Appeals for the Federal Circuit’s decision in SAS Institute, Inc. v. ComplementSoft, LLC, Case Nos. 15-1346; -1347 (Fed. Cir., Nov. 7, 2016) (per curiam) (Newman, J,...more

Supreme Court Agrees To Review Challenge To Constitutionality Of AIA Inter Partes Review Proceedings

by Brooks Kushman P.C. on

In a somewhat surprising decision, the U.S. Supreme Court granted certiorari on June 12, 2017 to hear a challenge to the legality of inter partes review (IPR) proceedings implemented by the Leahy-Smith America Invents Act in...more

Supreme Court to consider constitutionality of inter partes reviews

by Dentons on

After rejecting three prior requests, the Supreme Court has now granted certiorari to decide whether inter partes review (IPR) is constitutional. In its petition filed November 23, 2016, Oil States Energy Services, LLC, asked...more

Keys To Successful Swear-Behind Attempts Before PTAB

For patents subject to pre-AIA 35 U.S.C. § 102, patent owners involved in post-grant challenges such as inter partes review before the Patent Trial and Appeal Board can disqualify an asserted reference by establishing an...more

BREAKING NEWS: SCOTUS to Consider Whether AIA Review is Constitutional

by Goodwin on

The U.S. Supreme Court granted Oil States Energy Services’ petition for a writ of certiorari seeking review of the constitutionality of post-grant review proceedings by the USPTO’s PTAB. Oil States appealed to the U.S....more

IPR and CBM Statistics for Final Written Decisions Issued in April 2017

by Finnegan – AIA Blog on

The Patent Trial and Appeal Board issued 17 Final Written Decisions in April, cancelling 248 (86.11%) of the instituted claims while declining to cancel 30 (10.42%) of the instituted claims. Patent owners conceded 10 (3.47%)...more

Potential Impact of the Supreme Court’s Decision to Review the PTAB’s Practice of Issuing Partial Final Written Decisions in...

In a case with potential wide-ranging ramifications for patent validity challenges, on May 22, 2017, the Supreme Court granted a writ of certiorari in an appeal from an inter partes review (“IPR”) decision, SAS Institute v....more

Interplay Between Inter Partes Reviews (IPRs) and ITC Section 337 Proceedings

Since the passage of the America Invents Act (“AIA”) in 2011, Inter Partes Reviews (“IPRs”) before the Patent Trial and Appeal Board (“PTAB”) have assumed growing importance in patent litigation in federal district courts. ...more

Supreme Court to review policy of partial institution of inter partes reviews

by Dentons on

The Supreme Court recently granted certiorari and will review Patent Trial and Appeal Board (PTAB) practice involving instituting review on fewer than all patent claims challenged in an inter partes review (IPR) petition....more

Supreme Court Review in SAS Institute May Impact the Scope of Appealability and Estoppel in AIA Proceedings

Recently, the Supreme Court agreed to hear arguments on the question of whether the PTAB is required to issue a final written decision with respect to every claim challenged in an IPR petition. SAS Institute Inc. v. Lee, No....more

The Supreme Court Will Review the Board’s Partial Institution Practice

by Reed Smith on

On May 22, the U.S. Supreme Court granted SAS Institute’s Petition for Cert seeking review of the Board’s practice of instituting review of some challenged claims but not others. In the Federal Circuit’s decision on appeal,...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Our report includes discussions of six of the precedential cases decided in the past week and will include the other three cases in next week’s report. In Aylus v. Apple, the panel finds prosecution disclaimer in a...more

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