News & Analysis as of September 20, 2024

Covered Business Method 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 -

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions: Data and Trends: AIA PTAB Appeals to the Federal...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2023

Note: Includes reinstated, cross-, and consolidated appeals. After two years of declines, new appeals from the USPTO increased modestly in FY22. Appeals from district courts increased year over year as well, bucking a...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Data and Trends: AIA PTAB Appeals to the Federal...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/10/2022

Note: Includes reinstated, cross-, and consolidated appeals. Appeals from the USPTO dipped for the second straight year in FY21. Due to a spike in appeals from the Court of Federal Claims, District Courts are now the third...more

FedEx Delivery Sufficiently Akin to Priority Mail Express for Petition Service

Jones Day on 4/8/2021

A PTAB panel found FedEx sufficiently akin to Priority Mail Express to meet the petition service rule, and to the extent necessary further waived the regulatory requirements related to the timing of Petitioner’s (TIZ Inc....more

Final Rule to Assign Burden of Persuasion on Motions to Amend in Trial Proceedings

Manatt, Phelps & Phillips, LLP on 3/24/2021

The U.S. Patent and Trademark Office (Patent Office) has issued final rules in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings...more

The USPTO Clarifies its Approach to Indefiniteness in AIA Post-Grant Proceedings

Rothwell, Figg, Ernst & Manbeck, P.C. on 2/15/2021

Last month, in January 2021, the United States Patent and Trademark Office (“USPTO”) published a memorandum (the “January 2021 Memorandum”) clarifying how it will analyze claims for indefiniteness in AIA post-grant...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Data and Trends: AIA PTAB Appeals to the Federal...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/4/2021

These charts and graphs appear in the firm's Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions report... Appeals from the USPTO dipped in FY20, reaching their lowest level since FY15. After four...more

Bozeman Financial LLC v. Federal Reserve Bank (Fed. Cir. 2020)

McDonnell Boehnen Hulbert & Berghoff LLP on 4/16/2020

Less than two years ago, in Return Mail, Inc. v. U.S. Postal Service, 139 S. Ct. 1853 (2018), the Supreme Court held that a government entity -- in that case, the U.S. Postal Service -- is not a "person" under the America...more

Whither (more likely wither) CBMs

Fenwick & West LLP on 3/25/2020

Under the America Invents Act, the USPTO is to stop accepting petitions for review of covered business method patents after September 16, 2020. Given the various other priorities Congress will be dealing with between now and...more

PTAB By The Numbers: A Closer Look At The Most Recent PTAB AIA Trial Statistics

BakerHostetler on 1/24/2020

The United States Patent and Trademark Office (USPTO) recently posted the Patent Trial and Appeal Board (PTAB) statistics for December 2019 (first quarter of FY2020)....more

PTAB - 2019 Year in Review

Foley & Lardner LLP on 1/23/2020

To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board (PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s major developments in a webinar on...more

PTAB Bar Association – Thought Leader Summit Recap

Jones Day on 12/19/2019

In November, the PTAB Bar Association held its annual Thought Leader Summit. The Summit highlighted recent changes to PTAB practice, with a keynote address from USPTO Director Andrei Iancu. In the opening remarks, Director...more

Favorable Trends For Patent Owners Post-Aqua Products

Mintz - Intellectual Property Viewpoints on 11/22/2019

When former President Barack Obama signed the Leahy–Smith America Invents Act into law on Sept. 16, 2011, the patent system in the United States underwent one of its most sweeping and significant overhauls. The AIA replaced...more

For CBM Review, Both Aspects of Technology Exception Must Be Addressed

McDermott Will & Emery on 11/5/2019

In an opinion regarding a covered business method (CBM) review at the Patent Trial and Appeal Board (PTAB), the US Court of Appeals for the Federal Circuit adopted a new claim construction and found the PTAB’s decision on CBM...more

The PTAB Review - October 2019

Wilson Sonsini Goodrich & Rosati on 10/25/2019

Nothing Personal: Supreme Court Says Feds Lack Post-Grant Standing - With post-grant trials passing their seventh anniversary, the courts are still working out the kinks. The U.S. Supreme Court has already provided...more

Federal Circuit Remands CBM Review Decision, Asks PTAB to Explain Meaning of Part One of “Technological Invention” Exception

Akin Gump Strauss Hauer & Feld LLP on 10/17/2019

The Federal Circuit vacated a PTAB decision invalidating all challenged claims of U.S. Patent No. 8,908,842 (’842 Patent) and ordered the PTAB to reconsider whether the patent should have been disqualified from covered...more

Latest Federal Court Cases - September 2019 #4

Schwabe, Williamson & Wyatt PC on 10/1/2019

PATENT CASE OF THE WEEK - SIPCO, LLC v. Emerson Electric Co., Appeal No. 2018-1635 (Fed. Cir. Sept. 25, 2019) - In this appeal of the Patent Trial and Appeal Board’s (PTAB) final written decision regarding covered...more

NEWS: USPTO Issues Updates To PTAB Trial Practice Guide

Jones Day on 7/17/2019

The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in August 2012, concurrent with the...more

PTAB Strategies and Insights - June 2019: Supreme Court Eliminates Government as a Party Who Can File AIA Action at PTAB

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 6/24/2019

In Return Mail, Inc. v. U.S. Postal Serv., 17-1594, Justice SOTOMAYOR wrote for the majority to overturn a Federal Circuit decision that the U.S. Postal Service had standing to petition for covered business method review. The...more

Federal Agencies May Not Challenge Patents in AIA Post-Issuance Proceedings

Jones Day on 6/18/2019

The Supreme Court ruled in Return Mail that a federal agency is not a "person" who may challenge an issued patent in inter partes review, post-grant review, or CBM review under the AIA. In its 6–3 decision in Return Mail,...more

Return Mail v. Postal Service: The Supreme Court Rules the Federal Government May Not Petition for Institution of Post-Issuance...

Faegre Drinker Biddle & Reath LLP on 6/18/2019

In a 6-3 opinion authored by Justice Sotomayor, the Supreme Court held that the Federal Government is not a “person” capable of petitioning the Patent Trial and Appeal Board (“PTAB”) to institute patent review proceedings...more

Supreme Court Holds that Government Agencies May Not Use AIA Proceedings to Challenge Patents

Williams Mullen on 6/18/2019

On June 10, 2019 the United States Supreme Court held in Return Mail, Inc. v. United States Postal Service, 587 U.S. ____ (2019) that agencies of the federal government cannot challenge the validity of a patent via USPTO...more

Supreme Court Decides Federal Government May Not Challenge Patent Validity in the Patent Office Under the AIA

Stinson LLP on 6/14/2019

On June 10, 2019 in a 6-to-3 decision, Return Mail v. United States Postal Service, No. 17–1594, the U.S. Supreme Court decided that, based on principles of statutory interpretation, a federal agency is not a “person” that...more

High Court Says Federal Agencies Cannot Seek AIA Patent Challenges

Bradley Arant Boult Cummings LLP on 6/14/2019

Earlier this week, the United States Supreme Court reversed the Federal Circuit’s finding that the government is a “person” eligible to petition for post-issuance AIA review proceedings. This 6-3 decision, Return Mail, Inc....more

U.S. Supreme Court Issues Ruling in Return Mail v. U.S. Postal Service Prohibiting Federal Agencies from Seeking AIA Review

McDonnell Boehnen Hulbert & Berghoff LLP on 6/11/2019

In a 6-3 decision rendered earlier on June 10, 2019, the Supreme Court decided that federal agencies are not “persons” who can petition for post-issuance review of patents under the America Invents Act (AIA). Thus, the...more

Significant Jump in PTAB "Split Decisions"

Foley & Lardner LLP on 6/5/2019

The PTAB helpfully provides statistical data on the outcomes of AIA post-grant proceedings, including IPRs, CBMs, and PGRs. Current and historical statistics are available... While the types of data reported and the report...more

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America Invents Act › Patent Trial and Appeal Board › Covered Business Method Proceedings

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