News & Analysis as of September 20, 2024

America Invents Act › Precedential Opinion

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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 Patent Watch: Stick to the original idea in reissues

WilmerHale on 7/26/2023

Precedential Federal Circuit Opinions - IN RE: FLOAT'N'GRILL LLC [OPINION] (2022-1438, 7/12/2023) (Prost, Linn, and Cunningham) - Linn, J. The Court affirmed the Patent Trial and Appeal Board’s decision “affirming the...more

Director Vidal Hands Down Precedential Decision on Issue of First Impression Addressing Patentability of Multiple Dependent Claims

Akin Gump Strauss Hauer & Feld LLP on 4/11/2023

Patent Office Director Katherine Vidal recently issued a precedential decision addressing an issue of first impression before the Board: whether the patentability of multiple dependent claims must be determined separately for...more

Director Vidal Issues Interim Guidance on Discretionary Denials under Fintiv

Fish & Richardson on 6/27/2022

Earlier today, USPTO Director Kathi Vidal issued interim guidance regarding the application of the factors the PTAB considers in determining whether to institute an AIA post-grant proceeding where there is parallel district...more

Last Week in the Federal Circuit (September 27-October 1): IPRs, Ex Parte Reexams, and the APA

Morrison & Foerster LLP - Federal Circuitry on 10/5/2021

Last week the Federal Circuit judges geared up for their October argument session and perhaps enjoyed the beautiful fall weather in Washington. But the Court still found time to issue a dozen decisions in a wide range of...more

Fish Post-Grant Radio: Episode #13: Rick Bisenius

Fish & Richardson on 8/27/2021

This episode of Fish Post-Grant Radio features Fish attorneys Stuart Nelson – in his final episode as host – and Rick Bisenius, who will take over from Stuart going forward. In it, they discuss major precedential PTAB...more

Last Week in the Federal Circuit (May 24-28): Once A Granted Patent, Always a Granted Patent?

Morrison & Foerster LLP - Federal Circuitry on 6/1/2021

We hope our readers had a restful Memorial Day Weekend. Even DC’s cicadas took the weekend off. Before the long weekend, the Federal Circuit left us with 3 precedential opinions, including one addressing what qualifies as...more

Last Week in the Federal Circuit (March 8-12): The NeverEnding Story of the AIA’s No-Appeal Bar

Morrison & Foerster LLP - Federal Circuitry on 3/17/2021

Wow—it was a busy week at the Court last week. Lots of opinions, and lots of precedential ones. There were lots of good choices out there, so we sort of threw a dart at a board to see which one to write about. In the end,...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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/3/2021

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

PTAB Requests Comments Regarding Discretionary Institution Issues

Jones Day on 10/21/2020

The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct....more

Last Week in the Federal Circuit (August 17-21): Can Patent Owners Set Aside Adverse PTAB Decisions in District Court APA...

Morrison & Foerster LLP - Federal Circuitry on 8/25/2020

Last week, the Court did not have many precedential decisions as Washington, D.C., COVID-19 or not, was in its usual August slowdown. Unlike the previous two weeks where we touched upon non-patent issues, we return (kind of,...more

A Dissenting Opinion On Weighing The Fintiv Factors

Jones Day on 6/11/2020

The PTAB has explained that it has discretion to deny an IPR petition even if the petitioner has shown that it meets the statutory threshold for institution, which requires “that there is a reasonable likelihood that the...more

Federal Circuit Averts Huge Disruption to the Patent System by Fashioning a Cure to the Status of Administrative Judges

Sunstein LLP on 5/6/2020

In October 2019, a Federal Circuit panel concluded that the status of Administrative Patent Judges (APJs) on the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (PTO) violated the Appointments...more

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/10/2020

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...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

PTAB Precedential Decision Recap

Jones Day on 9/30/2019

The PTAB has been very active in designating decisions precedential and informative in 2019. Here’s a recap of designations so far...more

August Boardside Chat Recap Regarding Trial Practice Guide Update

Jones Day on 8/13/2019

On August 8, 2019, the Patent Trial Appeal Board held a Boardside Chat webinar to discuss the July 2019 changes to the AIA Trial Practice Guide. Vice Chief Administrative Judges Michael Tierney and Tim Fink led the discussion...more

PTAB Designates as Precedential 2014 Decision Governing Communications with Counsel During Deposition

Williams Mullen on 7/15/2019

On July 10, 2019, the Patent Trial and Appeal Board designated as precedential Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 19 (PTAB, July 21, 2014), which concerned the rules governing depositions in the...more

Chicago-Kent Journal of IP: Precedential Opinion Panel Resolves Conflicts in PTAB Opinions on Joinder

Jones Day on 6/10/2019

Since its inception through the Leahy-Smith America Invents Act (“AIA”), the proper role and function of the Patent Trial and Appeal Board (“PTAB”) of the U.S. Patent and Trademark Office (“PTO”) in adversarial post-grant...more

"Pop Change" No Longer Means Buying Soda in Ohio: Keeping up with the Precedential Opinion Panel in 2019

Knobbe Martens on 5/24/2019

For many practitioners, it seems that change is the only certainty at the Patent Trial and Appeal Board. And only five months into the year, change in 2019 has become more certain than ever. Late last year, the PTAB...more

Federal Circuit Provides Guidance on Section 101 and CBMs

Jones Day on 4/23/2019

On Thursday, the Federal Circuit issued a precedential decision in Trading Technologies International, Inc. v. IBG Interactive Brokers, LLC, No. 17-2257 (Fed. Cir. Apr. 18, 2019), that provides another data point on how CBM...more

USPTO Designates Three Decisions Relating to Real-Party-in-Interest as Precedential

Bass, Berry & Sims PLC on 4/23/2019

As discussed in our alert from last week, the United States Patent and Trademark Office (USPTO) has recently taken measures to increase the predictability and uniformity at the Patent Trial and Appeal Board (PTAB). The USPTO...more

PTAB Issues Updated Guidance on Motions to Amend in AIA Trials

Jones Day on 3/18/2019

On March 7, 2019, the PTAB issued a new precedential order that helps to clarify a petitioner’s briefing rights in view of a recent update to the AIA Trial Practice Guide....more

The PTAB Review - June 2016

Wilson Sonsini Goodrich & Rosati on 6/10/2016

Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more

PTAB Designates Two America Invents Act Review Decisions as Precedential

Saul Ewing Arnstein & Lehr LLP on 1/21/2016

Recently, the Patent Trial and Appeal Board (PTAB) designated two America Invents Act (AIA) review decisions as precedential: LG Electronics, Inc. v. Mondis Technology, Ltd. and Westlake Services, LLC v. Credit Acceptance...more

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America Invents Act › Precedential Opinion

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