The PTAB’s institution rates have bounced back under Director Vidal, as discretionary denials have plummeted.
Key Points:
..Petitioners are enjoying the highest institution rate since 2015-2016, driven largely by a...more
The USPTO may issue new rules on the current practices found in its “precedential” PTAB decisions.
Key Points:
..The PTAB often denies IPR and PGR petitions for reasons other than the merits of the petition, such as the...more
The PTAB may join only parties, not issues, to existing proceedings.
Key Points:
..A party may no longer join additional issues to a pending IPR.
..Defendants are most likely to be affected when more than one year...more
The new procedures could be in place before the end of 2018 with far-reaching effects for both patent owners and petitioners.
Key Points:
..The new procedures allow a patent owner to file a motion to amend six weeks...more
The PTAB will apply the same Phillips standard applied by district courts and the ITC.
Key Points:
..The change is not retroactive, and will apply only to IPR, PGR, and CBM petitions filed on or after November 13,...more
Accused patent infringers may be time-barred by service of a complaint in a lawsuit that was later voluntarily dismissed without prejudice.
Key Points:
..Under the PTAB’s old precedent, voluntary dismissals without...more
The PTAB’s new guidance in light of a recent Supreme Court ruling changes the dynamics for patent owners and petitioners.
Key Points:
..Partial institutions are no longer permitted. The PTAB will review all petitioned...more
5/11/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
Oil States preserved the PTAB, and SAS Institute makes it a more important venue for patentability challenges.
Key Points:
..IPR and other post-grant proceedings before the PTAB will continue.
..However, the PTAB may...more
4/27/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Litigation ,
Patents ,
Post-Grant Review ,
Public Rights Doctrine ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
By giving patent owners a more effective tool for amending claims during an IPR proceeding, the Federal Circuit’s latest en banc decision changes the way stakeholders approach these proceedings.
Key Points:
- The burden...more
The key question for the Court is whether an agency or only an Article III court may cancel an issued patent -
The Supreme Court granted certiorari in Oil States Energy Services LLC v. Greene’s Energy Group, LLC, No....more
6/19/2017
/ America Invents Act ,
Article III ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patents ,
Post-Grant Review ,
Private Property ,
Public Property ,
SCOTUS ,
USPTO
Federal Circuit holds that patent owner’s statements can trigger prosecution disclaimers.
On May 11, 2017 in Aylus Networks, Inc. v. Apple Inc., the Federal Circuit addressed for the first time whether statements made...more
Supreme Court sides with Patent Office’s rulemaking authority.
On Monday, June 20, 2016, the US Supreme Court issued its eagerly awaited Cuozzo decision, affirming the Federal Circuit’s decision. Specifically, the Court:...more
6/23/2016
/ America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Cuozzo Speed Technologies ,
Cuozzo Speed Technologies v Lee ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
SCOTUS ,
USPTO
New rules give more options to patent owners and petitioners in pre-institution phase.
On March 31, 2016, the Patent and Trademark Office (PTO) issued new final rules to govern practice before the Patent Trial and Appeal...more
4/6/2016
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Covered Business Method Proceedings ,
Duty of Candor ,
Expert Testimony ,
Final Rules ,
Genuine Issue of Material Fact ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
USPTO
Patent owners can include expert testimony with a preliminary response.
The Patent Office (Office) conducted a nationwide listening tour in April and May of 2014 to gauge the effectiveness of the rules governing...more