News & Analysis as of

United States Patent and Trademark Office America Invents Act

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -

Federal Circuit Shifts Burden of Demonstrating Patentability for Amended Claims in Post-Grant Proceedings

by Alston & Bird on

Since the enactment of the America Invents Act (AIA), the USPTO’s Patent Trial and Appeal Board (PTAB) has required patent owners to bear the burden of proving the patentability of substitute claims in post-grant motions to...more

Financial Times to "the Patent Troll Narrative" -- Much Ado About Nothing

On October 16, 2017, the Financial Times (London) published an article by Rana Foroohar entitled "Big Tech vs. Big Pharma: the battle over US patent protection." If the article can be encapsulated in a word, that word would...more

Federal Circuit Finds That Petitioners Have Burden Of Persuasion Of Unpatentability Of Claims Amended During An IPR Proceeding,...

by Shook, Hardy & Bacon L.L.P. on

In a much anticipated decision, the Federal Circuit has narrowly decided that a patent owner moving to amend claims during an inter partes review (IPR) does not have the burden of persuasion that the claims are patentable....more

Federal Circuit Shifts Burden of Proof for Amendments in Post-Grant Proceedings

by Hogan Lovells on

On October 4, 2017, the Federal Circuit, sitting en banc, issued a ruling in Aqua Products, Inc. v. Matal, placing the burden of persuasion on the petitioner to prove the invalidity of amended claims in post-grant...more

Federal Circuit Shifts Burdens for Motions to Amend

On October 4, 2017, the Federal Circuit, sitting en banc, issued its long-awaited decision in Aqua Products, Inc. v. Matal. Appeal No. 2015-1177. The court was fractured in its analysis, issuing five opinions. Seven judges, a...more

Federal Circuit Rejects Some USPTO Requirements For Amending Claims During IPR Proceedings

by Brooks Kushman P.C. on

On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision rejecting certain procedures adopted by the Patent Trial and Appeal Board (PTAB or Board) limiting a patent owner’s ability to...more

Federal Circuit splits on deference to agency rules

by Dentons on

The US Court of Appeals for the Federal Circuit (the Court), sitting en banc, issued its long-anticipated decision in Aqua Products[i], regarding properly allocating the burden of proving validity (or invalidity) when...more

In IPRs, Petitioner Must Show Claim Amendments Unpatentable

by Morgan Lewis on

A recent Federal Circuit ruling shifts the burden to petitioners, which will likely lead to patent owners filing more motions to amend....more

Aqua Products: Petitioner Bears Burden of Proving Unpatentability of Amended Claims in Inter Partes Review

The full U.S. Court of Appeals for the Federal Circuit held in Aqua Products “the burden of proving the unpatentability of all claims in an IPR—both original and amended—is on the petitioner.” Five opinions (including one...more

Todd Walters Participates in Fireside Chat with Chief Judge of PTAB

On Tuesday, September 12, 2017, the Patent Trial & Appeal Board (PTAB) conducted a special “Boardside Chat” webinar with Chief Judge David Ruschke. Todd Walters represented the American Bar Association Intellectual Property...more

Federal Circuit’s Amicus Brief in Oil States

Although the Federal Circuit already passed on the constitutionality of Inter Partes Reviews, considering some of its recent decisions, it appears that the Federal Circuit questions the competence of the PTAB to conduct...more

USPTO Maintains Standard for Indefiniteness in Rare Precedential Opinion

by Orrick - IP Landscape on

Decision on Appeal, Ex parte McAward et al., No. 2015-006416 (P.T.A.B. August 25, 2017) (Judges Linda E. Horner, Annette R. Reimers and Nathan A. Engels) - The Supreme Court’s decision in Nautilus, Inc. v. Biosig...more

Fresh From the Bench: Precedential Patent Cases From the Federal Circuit

Today the Circuit agreed to hear en banc Nantkwest v. Matal,in which the panel had reversed a district court decision that had rejected the PTO’s position that applicants who appeal a district court must pay the PTO’s legal...more

In re McAward (PTAB 2017)

Patent law can be apparently inconsistent, particularly where claim construction is concerned. For example, claim construction standards that apply in district court are not the same standards that the U.S. Patent and...more

[Webinar] Prior Art: Understanding and Attacking Prior Art Rejections - September 6, 10:00am ET

Join us for a compare and contrast discussion on what constitutes prior art in the United States and in Europe, and how to respond to rejections over that art. Relying on over sixty years combined prosecution experience...more

3 Key Takeaways: Navigating the Post-Grant Landscape

Kilpatrick Townsend’s John Alemanni, Allison Dobson, Matthew Holohan, and Wab Kadaba recently presented on navigating the Post-Grant landscape. Here are three key takeaways from their presentation. The STRONG Patents Act...more

To Be or Not to Be a Micro Entity

by Baker Donelson on

When filing a patent application with the United States Patent and Trademark Office (USPTO), certain applicants have the option to designate “small entity status” or “micro entity status.” Claiming either small or micro...more

Cloud9 Technologies LLC v. IPC Systems, Inc. (PTAB 2017)

Petitioner Cloud9 requested covered business method (CBM) review of IPC's U.S. Patent No. 8,189,566 before the USPTO's Patent Trial and Appeal Board. Due to the claims of the '566 patent not reciting a financial element, the...more

STRONGER Patents Act of 2017 Likely Too Heavy Lift for Congress

by Orrick - IP Landscape on

It may be late July, but the impending Congressional recess has not lessened potential interest by lawmakers in patent reform. On June 21, 2017, Sen. Christopher Coons (D-Delaware) introduced Senate Bill 1390, entitled the...more

STRONGER Patents Act Proposes Substantial Changes to AIA Trial Proceedings

On September 21, 2017, Senator Chris Coons (D-Del.) introduced the STRONGER Patents Act of 2017 in the Senate. STRONGER is an acronym for “Support Technology and Research for Our Nation’s Growth and Economic Resilience.” The...more

Supreme Court’s Ruling on AIA Patent Reviews Could Reverberate Across Patent Law Landscape

Supreme Court’s Ruling on AIA Patent Reviews Could Reverberate Across Patent Law Landscape - Key Takeaways - The impact of the Court’s grant of Oil States’s petition for certiorari, and their subsequent decision on...more

Supreme Court to Decide the Constitutionality of Inter Partes Review

In a move that could drastically change the patent law landscape, the United States Supreme Court recently granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group LLC, No. 16-712, to answer the question...more

Earthquake Coming? Supreme Court to Weigh Constitutionality of IPRs (2nd Article)

On June 12, the Supreme Court took certiorari on probably the biggest IPR case possible: a case challenging the constitutionality of IPRs on separation-of-powers and seventh amendment grounds. This comes just a few weeks...more

Supreme Court to Review Whether PTAB Must Address All Issues Raised in IPR Petition

by McDermott Will & Emery on

Echoing Judge Newman’s dissent in the US Court of Appeals for the Federal Circuit’s decision in SAS Institute, Inc. v. ComplementSoft, LLC, Case Nos. 15-1346; -1347 (Fed. Cir., Nov. 7, 2016) (per curiam) (Newman, J,...more

Earthquake Coming? Supreme Court to Weigh Constitutionality of IPRs

It’s no secret that patentees have been generally unhappy with both the process and outcomes of AIA reviews. Now the Supreme Court has agreed to decide whether the entire AIA review system will be eliminated on...more

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