News & Analysis as of

Final Written Decisions Adverse Judgments Patents

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2023 PTAB Year in Review: Analysis & Trends: 2023 PTAB Case Highlights

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

Jones Day

PTAB Declines To Enter Adverse Judgment Against Pre-Institution Disclaimed Claims

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Although the Federal Circuit had previously held that the PTAB may enter adverse judgment when a patent owner disclaims all claims challenged in an inter partes review (“IPR”) petition before an institution decision, in...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Arthrex, Inc. v. Smith & Nephew, Inc., 880...

Smith & Nephew petitioned for inter partes review (IPR) of Arthrex’s patent. After the petition was filed, but before the Board issued an institution decision, Arthrex statutorily disclaimed all the challenged claims under 37...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Jones Day

Joined Parties Have Statutory Standing To Appeal

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In Friday’s decision in Mylan Pharmaceuticals Inc. v. Research Corp. Technologies, Inc., No. 17-2088 (Fed. Cir. Feb. 1, 2019), the Federal Circuit held that a time-barred petitioner that is joined into a case has an...more

Foley & Lardner LLP

Federal Circuit: Pre-IPR Institution Disclaimer of Claims Insufficient to Avoid Adverse Judgment

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At this point, several cases have examined the appealability of the Board’s institution decisions in inter partes review (“IPR”) proceedings. See, e.g., Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131, 2142 (2015) (holding...more

Foley & Lardner LLP

Federal Circuit: Effect of Disclaimer Prior to Trial Institution

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In Arthrex, Inc. v. Smith & Nephew, Inc., et al., slip op. 2017-1239, the Federal Circuit affirmed the Board’s decision to enter an adverse judgment following Patent Owner’s disclaimer of all claims challenged in an inter...more

Knobbe Martens

Arthrex, Inc. v. Smith & Nephew, Inc.

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Federal Circuit Summaries - Before Newman, Dyk, and O’Malley. Appeal from the Patent Trial and Appeal Board. Summary: The PTAB may enter an adverse judgment against a patent owner where, before issuing an institution...more

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