News & Analysis as of

United States Patent and Trademark Office Patent Owner Preliminary Response

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 -
Jones Day

Director Says Not Filing Mandatory Notices and POPR Does Not Justify Adverse Judgment

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In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition...more

Foley & Lardner LLP

Sotera Stipulation Filed After the Patent Owner’s Response Still Deemed Effective

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The Patent Trial and Appeal Board (PTAB) recently addressed both the timing requirements and procedures for filing a Sotera stipulation before the Board in, BMW of North America LLC v. Northstar Systems LLC, IPR2023-01017...more

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Petitioner Prevails In Institution Decision Do-Over After Director Steps In

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On November 6, 2023, the PTAB issued an decision instituting inter partes review of U.S. Patent No. 10,681,009 B2 (“the ’009 patent”) in Keysight Technologies, Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 16 (PTAB...more

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

Two New PTAB Precedential Decisions

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

McDermott Will & Emery

It Can Take Three Appeals to Make a Claim Construction Go “Right”—or Three Bites by Apple

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In a nonprecedential opinion on remand from the US Court of Appeals for the Federal Circuit and a US Patent & Trademark Office (PTO) Director-granted request for review, the Patent Trial & Appeal Board (Board) reconstrued...more

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

PTAB to Review Two Eylea® (aflibercept) Patents After Granting Mylan’s Challenges

The U.S. Patent and Trademark Office (USPTO) recently instituted two of Mylan’s petitions seeking Inter Partes Review of Regeneron’s U.S. Patent No. 9,669,069 B2 (the “’069 Patent,” subject of IPR2021-00880) and U.S....more

Jones Day

BREAKING: PTAB Publishes Final Rule Package

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On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference...more

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

2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more

McDermott Will & Emery

PTAB Designates Three Opinions as Precedential

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In General Electric Co. v. United Technologies Corp., Case No. IPR2017-00491 (PTAB July 6, 2017) (Weatherly, APJ) (designated precedential on Sept. 9, 2019), the Patent Trial and Appeal Board (PTAB) declined to institute...more

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

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

Jones Day

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

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On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The...more

Knobbe Martens

USPTO Publishes PTAB Trial Practice Guide Update

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On July 14, 2019, the USPTO published a second update to the AIA Trial Practice Guide with additional guidance about trial practice before the Board. This latest update, while lengthy, does not introduce many significant...more

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

USPTO Announces Sweeping Changes to Motion to Amend Procedures in AIA Trials via Pilot Program

On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more

Jones Day

Misbehavior In IPR Can Form Basis For Inequitable Conduct

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Finjan, Inc. v. Cisco Systems, Inc., Case No. 17-cv-00072-BLF (N.D. Cal. Sept. 13, 2018), reminds us that representations to the PTAB can have consequences in district court litigation, even outside the estoppel context. ...more

Bracewell LLP

Singing the Same Claim Construction Tune: USPTO Adopts Federal Court Claim Construction Standard for AIA Proceedings

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On October 11, 2018, the United States Patent and Trademark Office (USPTO) published notice of a final rule change adopting the claim construction standard applied by federal courts for use by the Patent Trial and Board...more

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

USPTO Changes Claim Construction Standard in Post-Grant Proceedings

The USPTO has published a final rule, changing the claim construction standard applied during post-grant proceedings (inter partes reviews, post-grant reviews, and covered business methods reviews) before the Office’s Patent...more

Jones Day

Practical Tips from the Judges’ Panel at the PTAB Judicial Conference

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On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more

Foley & Lardner LLP

SAS Institute: One Month In

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We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability...more

Foley & Lardner LLP

SAS Institute: Two Weeks In

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As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more

Knobbe Martens

USPTO Issues Guidance on Impact of SAS on AIA Trial Proceedings

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On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings....more

Jones Day

Failure To Maintain Correspondence Address Could Be Detrimental To Your Health

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The PTAB rules state that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent.” 37 C.F.R. § 42.105(a). Prompt service is important in IPRs...more

Jones Day

Disclaimer Before Institution May Not Avoid Adverse Judgment Estoppel

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In a split decision that drew separate opinions from each of the panel members, the Federal Circuit recently affirmed the PTAB’s decision to enter an adverse judgment against a patentee, even though the patentee had properly...more

Jones Day

PTAB Denies Motion to Withdraw as IPR Counsel

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In an order entered June 30, 2017, the PTAB denied a motion by counsel for patent owner Purple Leaf, LLC (“Counsel”) to withdraw from representation in a trio of IPRs (IPR2016-01720, IPR2016-01721, and IPR2016-01722). Counsel...more

Knobbe Martens

Statements Made in an IPR Can Lead to Prosecution Disclaimer

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The Federal Circuit held that statements made by a patent owner in an IPR, whether before or after institution, can be considered during claim construction in district court litigation and relied upon to support a finding of...more

Foley & Lardner LLP

IPR Proactive Defense Measures – Strategies and Considerations for Patent Owners

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Many patent owners have not yet had to defend against an inter partes review (IPR), but the popularity of this proceeding increases the chances that they will encounter it down the road if they have not already faced one....more

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