Patent Trial and Appeal Board

News & Analysis as of

If You Amend Claims In A Post Grant Proceeding, Don’t Forget To Supplement Infringement Contentions In Parallel Litigation

The Federal Circuit’s recent decision in Target Training International v. Extended Disc North America tells the cautionary tale of what can happen to a plaintiff who successfully navigates a post grant challenge by amending...more

Between a Rock and a Hard Place: Federal Circuit Says It's Required to Accord the PTAB Deference Until Instructed Otherwise by...

On Tuesday, April 26, 2016, the Federal Circuit issued an order denying a petition filed by Merck & Cie for rehearing en banc of an Inter Partes Review (“IPR”) final written decision by the Patent Trial and Appeal Board...more

Supreme Court Hears Oral Arguments In First Appeal From AIA Post-Grant Proceeding: Justices Focus on Practical Consequences of...

On April 25, 2016, the U.S. Supreme Court heard oral arguments in its first appeal from a decision by the USPTO’s Patent Trial and Appeal Board (“PTAB” or “Board”) in an inter partes review proceeding (“IPR”) under the...more

New Analyses of AIA Trial Data by Technology

The United States Patent & Trademark Office published new analyses along with its most recent update of AIA Trial Statistics. The update includes data through end of March 2016 and shows “Percent of Petitions Instituted by...more

Federal Circuit Maintains “Substantial Evidence” Standard of Review in AIA Post Grant Proceedings

On April 26, 2016, the Federal Circuit denied a petition seeking rehearing en banc of its application of the “substantial evidence” standard of review in post-grant administrative proceedings, in the case of Merck & Cie v....more

Qualtrics, LLC v. OpinionLab, Inc. (PTAB 2016)

Focusing on the Claims, the PTAB Denies CBM Review of a Market Research Patent - On April 13, 2016, the U.S. Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) issued a decision denying institution...more

Court Invalidates Claims Under §101 After PTAB Denies CBM Review

A Covered Business Method (CBM) review applies to patents that “claim[] a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial...more

Supreme Court Hears Arguments in Cuozzo Case

We should soon find out whether the Federal Circuit will again face reversal at the hands of the Supreme Court in a patent case. On April 25, 2016, the Court heard oral arguments in the case of In re Cuozzo, the first IPR...more

Of Patent Trolls and Hot Dog Stands -- The Supreme Court Oral Argument in Cuozzo Speed Technologies, LLC v. Lee

Earlier today, the Supreme Court heard oral arguments in the Cuozzo Speed Technologies, LLC v. Lee appeal (Supreme Court docket number 15-466). The Court was considering two issues related to the recently implemented IPR...more

Intellectual Property Alert: U.S. Supreme Court Hears Oral Arguments in Cuozzo Speed Technologies v. Lee

Today, the Supreme Court heard oral argument in Cuozzo Speed Technologies, LLC v. Lee. Two important issues are presented to the Court: 1. Whether the court of appeals erred in holding that, in IPR proceedings, the...more

Patent Owners Now Estopped From Relying On PTAB Estoppel

A recent Federal Circuit decision on a writ of mandamus as to the scope of the estoppel provided in 35 U.S.C § 315(e) appears to be contrary to the scope that practitioners and the legislators had in mind when the America...more

Patent Office Issues Final Rule Amending the Rules of Practice for Trials at the PTAB

The U.S. Patent and Trademark Office (Patent Office) has issued a final rule that addresses aspects of trial practice for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB), takes effect May...more

It’s Not the Broadest Reasonable Interpretation, but the Broadest Reasonable Interpretation in Light of the Specification

In In re Man Machine Interface Tech. LLC, [2015-1562] (April 19, 2016), the Federal Circuit affirmed-in-part, reversed-in-part, vacated-in-part, and remanded the PTAB’s affirmance of the rejection of claims of U.S. Patent No....more

"After Period of High Invalidation Rates, New US Patent Challenge Procedures May Slow Down to Moderate Pace"

When the U.S. Patent and Trademark Office's (USPTO) Patent Trial and Appeal Board (PTAB) began hearing post-issuance patent challenge proceedings under the America Invents Act in September 2012, the PTAB became one of the...more

Petitioners that Rely on Deposition Testimony to Establish that a Publication Qualifies as Prior Art should be Prepared to Produce...

Routine discovery in review proceedings authorizes cross examination of affidavit testimony. 37 C.F.R. § 42.51(b)(1). If a petitioner submits affidavit testimony to prove that a publication qualifies as prior art, the...more

Institution of IPR Supports No Willful Infringement

An invalid patent cannot be infringed. Regardless, the Supreme Court recently held a good faith belief in the invalidity of a patent does not negate a finding of induced infringement. But what about willfulness – can a good...more

Jazz Xyrem + Valproate Patent Claims Avoid IPR

The USPTO Patent Trial and Appeal Board (PTAB) decided not to institute inter partes review (IPR) of key claims of Jazz’s U.S. Patent 8,772,306, which is listed in the Orange Book for Xyrem®. Although the PTAB did institute...more

PTAB Statistics From Spring BIO IPCC Meeting

At the end of March, the Intellectual Property Counsels' Committee (IPCC) of the Biotechnology Innovation Organization (BIO) held its Spring meeting, convening in-house counsel and outside counsel involved in patenting the...more

Strategic Considerations of Estoppel for IPRs After Shaw Industries Group v. Automated Creel Systems

When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more

IPR Petitions in BioPharma Grow in Popularity

The popularity of IPR petitions in the biopharma space has steadily grown since 2012 when IPRs were first introduced as a means of challenging the validity of patents. In 2013, 34 IPRs were filed, and the number nearly...more

Patent Office Updates Rules for Post-Grant Proceeding Duty of Candor

The United States Patent and Trademark Office recently amended 37 C.F.R. § 42.11 to include a certification requirement similar to that of Rule 11. Section 42.11 prescribes the duty of candor owed to the Patent Office. As...more

USPTO Publishes Substantive Changes to PTAB Rules

On April 1, 2016 the USPTO published the final rules that make substantive changes to the Patent Trial and Appeal Board (PTAB) trial practice rules for inter partes review (IPR), covered business method (CBM), and post-grant...more

Global Cash Access, Inc. v. NRT Technology Corp. (D. Nev. 2016)

U.S. District Court Disagrees with PTAB - On March 25, 2016, the U.S. District Court for the District of Nevada issued an Order in a case captioned Global Cash Access, Inc. v. NRT Technology Corp., and NRT Technologies,...more

Guarding Against Conclusory Statements & Why It Matters Even More Under The New PTAB Rules

A common deficiency highlighted in recent PTAB decisions denying institution of an IPR petition is that an expert declaration offers only “conclusory” statements in relation to one or more key aspects of the alleged ground of...more

Fish & Richardson Obtains Full Federal Circuit Reversal for Cutsforth, Inc. After Faulty Inter Partes Review

Decision is first-ever full reversal of an IPR decision of non-patentability; clears way for infringement lawsuit to proceed against MotivePower, Inc. Fish & Richardson’s appellate and post-grant teams won a major victory for...more

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