USPTO Director Review — Patents: Post-Grant Podcast
Fish Post-Grant Radio: Episode #13: Rick Bisenius
Monthly Minute | Commercialization of an Invention
Nota Bene Episode 99: Unpacking the Pendulum of American Patent Policy Then, Now, and Forward with Rob Masters
Strategic Insights for IPRs
Talking PTAB with Bob Steinberg
Collaborating Before The PTAB
Is The Deck Stacked Against Patent Owners In The PTAB?
Is the Patent Litigation Boom Coming to an End?
IP|Trend: Inter Partes Review: Is it Litigation or Something Else?
Interpartes Review: Is it Right for You?
Emerging Strategies for Protecting Global IP Rights
What the First-to-File Patent Change Means (And What IP Strategists Should Do About It)
The Corporate Law Report: First-to-File Patents, Hiring for Cultural Fit, Roth Conversions Post-Fiscal Cliff, and Global Corporate Insights
Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition before the United States International Trade Commission (the “ITC”), alleging...more
Speck v. Bates, No. 2023-1147 (Fed. Cir. May 23, 2024) addressed two issues, (1) whether courts should apply a one-way test or a two-way test to determine if pre-critical claims materially differ from post-critical claims,...more
Specify the Steps of Information Manipulation or Lose under § 101 - In Mobile Acuity Ltd. v. Blippar Ltd. Appeal No. 22-2216, the Federal Circuit held that patent claims that merely recite result-orientated, functional...more
In Pfizer Inc., v. Sanofi Pasteur Inc., SK Chems Co. Ltd., v. Vidal, 2019-1871 (March 5, 2024), the Federal Circuit affirmed the Board’s conclusions that claims 1–45 of U.S. Patent No. 9,492,559 were unpatentable due to...more
Celanese Int'l Corp. v. Int'l Trade Comm'n, No. 2022-1827, 2024 WL 3747277, at *1 (Fed. Cir. Aug. 12, 2024) - Manufacturers beware! Your sales of products based on secret manufacturing processes may invalidate your...more
The US Court of Appeals for the Federal Circuit affirmed the International Trade Commission’s (ITC) determination that the asserted process patents were invalid under the America Invents Act (AIA) because products made using...more
In Celanese Int’l Corp. v. ITC, the Federal Circuit addressed whether the America Invents Act (“AIA”) changed the on-sale bar such that the sale of a product made using a secret process would no longer invalidate later-sought...more
On August 12, 2024, the Federal Circuit published its decision in Celanese International Corp. et al. v. International Trade Commission. The Federal Circuit concluded that, under the America Invents Act (AIA), patent claims...more
In Sanho Corp. v. Kaijet Tech. Int’l Ltd., issued July 31, 2024, the U.S. Court of Appeals for the Federal Circuit addressed the Leahy-Smith America Invents Act (“the AIA”) public disclosure exception to prior art, 35 U.S.C....more
Precedential and Key Federal Circuit Opinions - 1. BACKERTOP LICENSING LLC [OPINION] (23-2367, 23-2368, 24-1016, 24-1017 Prost, Hughes, and Stoll) - Hughes, J. The Court affirmed the District Court’s orders (1)...more
The PTAB recently updated its Standard Operating Procedure 1 (SOP), which describes the process and guidelines for assigning judges to panels in all jurisdictions of the Board. This blog post highlights some of the key...more
On May 6th, 2024, the PTAB declined Ubiquiti Inc.’s (“Petitioner’s”) request to institute inter partes review. Ubiquiti Inc. v. XR Communications LLC D/B/A Vivato Tech., IPR2024-00148, Paper 12 (May 6, 2024). The PTAB...more
The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the Office. ...more
Inter partes reviews (IPRs) and post-grant reviews (PGRs) are proceedings in front of the Patent Trial and Appeal Board (PTAB) that allow a petitioner to challenge a patent’s validity and a patent owner to defend that...more
On April 30, the USPTO announced a Request for Comments (RFC) seeking public feedback on how AI could affect USPTO evaluations on patentability, including what qualifies as prior art and the assessment of the level of...more
On April 19, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) that proposes rules regarding the exercise of discretion to determine whether to institute an Inter Partes...more
On April 19, 2024, the USPTO published a long-awaited Notice of Proposed Rulemaking (NPRM) that followed its April 2023 Advance Notice of Proposed Rulemaking (ANPRM). The proposed rules package, Patent Trial and Appeal Board...more
One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more
On April 16, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking (NPRM) regarding Director Review of Patent Trial and Appeal Board (PTAB) decisions in America Invents Act (AIA)...more
A significant procedure for patent owners, Supplemental Examination, was established in the 2012 America Invents Act when Congress determined there should be a proceeding to turn events that in the past could lead to...more
The United States Patent and Trademark Office (USPTO) recently issued a Notice of Proposed Rulemaking seeking to revise its rules on amendment practice under the America Invents Act (AIA). Specifically, the USPTO is proposing...more
The United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking (NPRM) today proposing to update its rules governing motions to amend before the Patent Trial and Appeal Board (PTAB). ...more
In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow. Jason D. Eisenberg is a director...more
A trio of cases this past year illustrate a trend of increasing importance in the power of Patent-Office rulemaking and enforcement, and the influence it has on patent owners and challengers alike....more
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