News & Analysis as of

Sua Sponte Patent Ownership

McDermott Will & Emery

PTAB MTA Pilot Program to the Rescue

On review of a final written decision from the Patent Trial & Appeal Board in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that all challenged claims were obvious but left open the...more

McDermott Will & Emery

From Oops to Encore: The Board’s Premature Adverse Judgment

McDermott Will & Emery on

The Director of the US Patent & Trademark Office (PTO) overturned the Patent Trial & Appeal Board’s premature adverse judgment against a patent owner and remanded an inter partes review (IPR) proceeding based on the fact that...more

Foley & Lardner LLP

New Hope for Patent Owners Who Can’t or Don’t File Formal Responses?

Foley & Lardner LLP on

Apple Inc. v. Zipit Wireless, Inc. (IPR2021-01124, -01125, -01126, -01129) - Director Kathi Vidal has issued a new precedential decision sua sponte that impacts the standard for abandonment of contest in inter partes...more

Bass, Berry & Sims PLC

PTAB Explains When Sua Sponte Arguments Will Be Allowed

Bass, Berry & Sims PLC on

On July 6, the USPTO’s Precedential Opinion Panel (POP) issued a precedential decision in Hunting Titan, Inc. v. DynaEnergetics Europe GmbH, Case IPR2018-00600, Paper 67 (P.T.A.B. July 6, 2020) (precedential), explaining the...more

Foley & Lardner LLP

PTAB Enters Sua Sponte Patent Eligibility Rejections

Foley & Lardner LLP on

We’ve written previously about ex parte decisions of the Patent Trial and Appeal Board (PTAB) affirming patent eligibility rejections that seem to be inconsistent with the USPTO’s Subject Matter Eligibility Guidance....more

Knobbe Martens

PTAB Finds Claims Directed to an MRI Machine Patent-Ineligible

Knobbe Martens on

The Patent Trial and Appeal Board (“PTAB”) recently held in Ex parte Itagaki and Nishiara (PTAB 2016) that claims reciting a magnetic resonance imaging apparatus are directed to ineligible subject matter under 35 U.S.C. §...more

McDermott Will & Emery

Federal Circuit Will Review PTAB Rules for Claim Amendments in AIA Reviews

The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more

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