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United States Patent and Trademark Office › Burden of Proof

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 -
Haug Partners LLP

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making.  From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

Rothwell, Figg, Ernst & Manbeck, P.C.

Two New PTAB Precedential Decisions

Rothwell, Figg, Ernst & Manbeck, P.C. on

The United States Patent and Trademark Office (USPTO) maintains a list of all PTAB precedential and informative decisions organized by subject matter. These precedential decisions establish “binding authority concerning major...more

Linda Liu & Partners

Influence of Implementability of Prior Art in Determination of Novelty and Inventiveness

Linda Liu & Partners on

In patent examination, the examiner will cite a prior art document in order to determine whether or not an invention or utility model is novel and inventive. The applicants challenge the implementability of the cited prior...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

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

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

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

PTAB Strategies and Insights - July 2021

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

[co-author: Jay Bober, Summer Associate] 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...more

McDermott Will & Emery

You Want Some “Metchup” with That?

McDermott Will & Emery on

The US Court of Appeals for the Fifth Circuit found no infringement by a large, well-known company that used the registered mark of an individual whose own use was local and generated only a few sales and minimal profits. The...more

Morgan Lewis

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

Morgan Lewis on

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

Jones Day

Notes from House Judiciary Subcommittee Hearing on Arthrex

Jones Day on

On Tuesday, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet conducted a hearing to discuss recent court decisions, namely the Federal Circuit’s decision in Arthrex. Previously...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Proposed Rules on Burden of Proof for Motions to Amend in Post-Grant Proceedings

McDonnell Boehnen Hulbert & Berghoff LLP on

When post-grant proceedings under the America Invents Act began, the USPTO's Patent Trial and Appeals Board ("PTAB") treated motions to amend in those proceedings like most other motions:  the movant, here the patentee, bore...more

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

MarkIt to Market - February 2019: Trademark Practice Update: Outrageous! Disgraceful! Appalling!...or is it? SCOTUS to Decide the...

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

U.S. trademark attorneys received a New Year’s surprise last month when the Supreme Court of the United States agreed to hear Iancu v. Brunetti, the case that should determine the availability of federal trademark...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Upholds Trade Show Catalog As Prior Art in Nobel Biocare Servs. AG v. Instradent USA, Inc.

Mintz - Intellectual Property Viewpoints on

Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”)...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - July 2018 #5

Schwabe, Williamson & Wyatt PC on

Applications in Internet Time, LLC v. RPX Corp., Appeal Nos. 2017-1698, et al. (Fed. Cir. July 9, 2018) (unsealed July 24, 2018) In a lengthy decision on an issue of first impression, the Federal Circuit addressed the...more

McDermott Will & Emery

PTO Proposes Changes to Claim Construction Standard, Guidelines for Analyzing Burden of Proof and Subject Matter Eligibility

McDermott Will & Emery on

The US Patent and Trademark Office (PTO) proposed changing the standard for claim construction in America Invents Act post-grant proceedings from the broadest reasonable interpretation (BRI) to the Phillips v. AWH Corp....more

WilmerHale

Jumping into the Deep End: Amendment Practice Post-Aqua Products

WilmerHale on

In the U.S. Court of Appeals for the Federal Circuit’s recent en banc decision in Aqua Products, a deeply fractured court provides a glimpse into the perspectives that some of the judges have on post-grant practice at the...more

Hogan Lovells

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

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

Mintz - Intellectual Property Viewpoints

AQUA PRODUCTS: The Federal Circuit Shifts The Burden of Proof On Amending Claims During An IPR From The Patent Owner To The...

Mintz - Intellectual Property Viewpoints on

The United States Court of Appeals for the Federal Circuit’s recent decision in Aqua Products Inc., v. Matal materially changes the burden of proof associated with the patentability of amended claims during an inter partes...more

Foley & Lardner LLP

Celgene Notches Rare Win On PTAB Request For Rehearing

Foley & Lardner LLP on

The recent decisions of the USPTO Patent Trial and Appeal Board (PTAB) granting Celgene’s requests for rehearing in parallel Inter Partes Review proceedings brought by Kyle Bass’s Coalition for Affordable Drugs (CFAD) are...more

Foley & Lardner LLP

CAFC Vacates USPTO Single Reference Obviousness Rejection For Inadequate Showing Of Expectation of Success

Foley & Lardner LLP on

In a split decision with Judge Lourie dissenting, the Federal Circuit vacated an obviousness rejection that had been affirmed in an ex parte appeal to the USPTO Patent Trial and Appeal Board. The decision was rendered in In...more

Schwabe, Williamson & Wyatt PC

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

Schwabe, Williamson & Wyatt PC on

In Nidec v. Zhongshan, the entire panel affirms a determination of obviousness but two judges question whether § 315(c) of the AIA was improperly used to permit joinder as to a second Zhongshan petition filed after the...more

Spilman Thomas & Battle, PLLC

New Trademark Office Audit May Result in Cancellation of Registrations

Spilman Thomas & Battle, PLLC on

The United States Patent and Trademark Office (“USPTO”) announced a final rule that took effect on February 17, 2017. To assess and promote the accuracy and integrity of the trademark register, the USPTO amended rules...more

McDermott Will & Emery

Federal Circuit Rebukes PTAB for Shifting Burden of Proof to Patentee in IPR

McDermott Will & Emery on

Reaffirming the petitioner’s burden of proof codified in 35 USC § 316(e), the US Court of Appeals for the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB or Board) finding the patent owner’s...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Magnum Oil Tools Int'l, Ltd. (Fed. Cir. 2016)

McDonnell Boehnen Hulbert & Berghoff LLP on

McClinton Energy Group filed an inter partes review (IPR) petition against all claims of U.S. Patent No. 8,079,413, owned by Magnum Oil Tools International, Ltd. The USPTO's Patent Trial and Appeal Board (PTAB) instituted...more

Foley & Lardner LLP

Magnum Offers New Path for Challenging AIA Decisions: Burden of Production

Foley & Lardner LLP on

On July 25, 2016, the Court of Appeals for the Federal Circuit (CAFC) held in In re Magnum Oil Tools International (Newman, O’Malley & Chen) that the burden of production to show unobviousness does not shift to a patent owner...more

Proskauer - New England IP Blog

Sensor Maker Cannot Shake Infringement Suit on Summary Judgment

Proskauer - New England IP Blog on

A New Hampshire District Court recently denied defendant sensor makers’ attempt to tilt the case in their favor by denying summary judgment of invalidity and non-infringement. SignalQuest asserted three patents relating...more

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