News & Analysis as of September 22, 2024

America Invents Act › Standing

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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

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/8/2023

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

No More Bites at the Apple: Imminent and Non-Speculative Standing Still Required

McDermott Will & Emery on 11/18/2021

The US Court of Appeals for the Federal Circuit reiterated that a patent challenger did not have Article III appellate standing to obtain review of a final Patent Trial & Appeal Board (PTAB) ruling because the underlying...more

Leahy-Corbin Proposals for “Restoring the America Invents Act”

Jones Day on 10/22/2021

We recently reported on bipartisan legislation introduced by Senators Patrick Leahy (D) and John Cornyn (R) to significantly revamp certain features of the America Invents Act (AIA), ten years after its debut. This proposed...more

USPTO Codifies Burden of Persuasion Rules for AIA Amendments at the PTAB

Morgan Lewis on 12/28/2020

It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more

“Seams” Like Activity Giving Rise to Infringement Risk Supports Appellate Jurisdiction

McDermott Will & Emery on 7/9/2020

Adding to its body of jurisprudence on standing to challenge an adverse final written opinion in inter partes review (IPR) proceedings, the US Court of Appeals for the Federal Circuit found a petitioner had constitutional...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

No Competitor Standing for Appeal of IPR Decision Upholding Claims

McDermott Will & Emery on 9/6/2019

Again addressing the question of appellate standing for inter partes review (IPR) decisions, the US Court of Appeals for the Federal Circuit held that an IPR petitioner did not show a sufficient injury to confer Article III...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

Recent Developments on Article III Standing-to-Appeal AIA Trial Decisions

Jones Day on 5/28/2019

In past decisions, the Federal Circuit has made clear that a petitioner appealing a PTAB’s final written decision upholding the patentability of challenged claims after an AIA trial must establish Article III standing. In...more

5 Patent Law Petitions to Watch at the Supreme Court

Nutter McClennen & Fish LLP on 5/28/2019

As the 2018-2019 Supreme Court term nears its end, several consequential patent law petitions still await certiorari rulings before the Justices recess for the summer, while other patent cases are scheduled to be briefed and...more

Mootness on Appeal from PTAB

McDermott Will & Emery on 4/3/2019

The US Court of Appeals for the Federal Circuit dismissed an appeal of an inter partes review (IPR), finding that the challenger lacked appellate standing because it had terminated its attempts to develop the infringing...more

Infringement Suit Filed Without Standing Does Not Trigger Time-Bar

Jones Day on 3/6/2019

On January 31, 2019, the Patent Trial and Appeal Board issued a decision granting institution of inter partes review in Sling TV, L.L.C. v. Realtime Adaptive Streaming, L.L.C., No. IPR2018-01331, where the Board held that a...more

PTAB Strategies and Insights - February 2019: Federal Circuit Issues Further Guidance On AIA Proceeding Standing To Appeal

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/1/2019

Joinder Petitioners Have Standing To Appeal - In Mylan v. Research Corporation Tech (RCT), the Patent Owner, who won at the PTAB, argued that time barred joinder petitioners (Mylan, Breckenridge and Alembic - Appellants)...more

PTAB Strategies and Insights - February 2019

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/25/2019

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

Federal Circuit Patent Updates - December 2018

WilmerHale on 12/18/2018

Spineology, Inc. v. Wright Medical Technology Inc. (No. 2018-1276, 12/14/18) (Prost, Dyk, Moore) - Moore, J. Affirming denial of motion for attorney fees under 35 U.S.C. § 285. “[W]e caution future litigants to tread...more

The Supreme Court’s Business Docket for the October 2018 Term

Skadden, Arps, Slate, Meagher & Flom LLP on 10/23/2018

On September 26, 2018, Skadden hosted a webinar titled “US Supreme Court October 2018 Term.” Topics included some of the key business-related cases on the Supreme Court’s docket, including cases addressing antitrust, foreign...more

Art. III Standing Required for Appeal from AIA Proceeding

McDermott Will & Emery on 10/2/2018

Consistent with its own precedent, the US Court of Appeals for the Federal Circuit confirmed that to sustain an appeal from an America Invents Act (AIA) proceeding, an appellant party must establish a concrete and substantial...more

JTEKT v GKN: Lacking Standing, Competitor Cannot Appeal PTAB IPR Ruling

Fenwick & West LLP on 8/29/2018

The Federal Circuit further restricted a petitioner’s ability to appeal a decision by the Patent and Trademark Appeal Board upholding the validity of a patent. The court this month found in JTEKT v. GKN Automotive that a...more

Federal Circuit Redraws the Boundaries of Real Party-in-Interest Challenges to IPRs

Wilson Sonsini Goodrich & Rosati on 7/30/2018

Petitioners for inter partes review (IPR) of a patent under the America Invents Act (AIA) are required by statute to identify "all real parties in interest." Who qualifies as a real party in interest (RPI) or privy has...more

Is the Government a “Person” Who May Institute PTAB Trials?

Jones Day on 7/13/2018

The America Invents Act (“AIA”) provides that a “[a] person may not file a petition for [covered business method review] unless the person or the person’s real party in interest or privy has been sued for infringement or...more

Petitioner Has Standing when Injury Is Imminent

McDermott Will & Emery on 7/10/2018

While reversing a Patent Trial and Appeal Board (PTAB) decision that confirmed the validity of a patent, the US Court of Appeals for the Federal Circuit ruled that a post-grant review (PGR) petitioner has Article III standing...more

Non-Defendant IPR Petitioners’ Appellate Standing on Shaky Ground

McDermott Will & Emery on 3/6/2018

In dismissing an appeal from a Patent Trial and Appeal Board (PTAB) decision, the US Court of Appeals for the Federal Circuit explained that the non-defendant inter partes review (IPR) petitioner did not have Article III...more

Will Inter Partes Reviews Be Abolished By The Supreme Court?

Dickinson Wright on 12/22/2017

On November 27, 2017, the Supreme Court heard oral arguments in a case that could undermine a key provision in the America Invents Act. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (Oils States). The issue...more

US: Supreme Court hears argument on constitutionality of inter partes review

Hogan Lovells on 12/4/2017

On November 27, 2017, the Supreme Court heard oral arguments in a case that will determine the constitutionality of inter partes review, a proceeding before the United States Patent and Trademark Office’s Patent Trial and...more

Centuries of Precedent are Little Help as IPR Constitutionality Divides Justices

Robins Kaplan LLP on 11/28/2017

This morning the Supreme Court heard arguments in the heavily anticipated case of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC on the question of whether AIA trials at the patent office, such as inter partes...more

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America Invents Act › Standing

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