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 Court’s decision, expected next summer, is unlikely to affect currently pending PTAB proceedings.
Key Points:
..The Supreme Court will review the Federal Circuit’s decision holding that the appointments of 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 Court’s decision potentially subjects PTAB final written decisions on appeal to vacatur and remand.
Key Points:
..Patent Act’s restrictions on removal no longer apply to Patent Trial and Appeal Board’s (PTAB)...more
Latham lawyers Jonathan Strang and Bob Steinberg share the nuts and bolts of the new PTAB Pilot Program for Motions to Amend....more
Latham lawyers Jonathan Strang and Bob Steinberg discuss the strategic issues patent owners and petitioners need to consider under the new PTAB Pilot Program for Motions to Amend. ...more
Patent owners seeking amendments in PTAB proceedings will have two new options: asking for preliminary feedback, and revising their motions to amend.
Key Points:
..The Final Pilot Program adds options to the amendment...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
Key procedural changes mark the first update to the PTAB’s Trial Practice Guide since 2012.
Key Points:
..The changes, including a new pre-hearing conference and possible live testimony, increase the importance of having...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
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
Federal Circuit to determine whether PTAB decisions concerning the America Invents Act’s one-year time-bar are appealable -
Key Points:
..PTAB determinations regarding the one-year bar are not currently appealable...more
With the increased popularity of the Patent Trial and Appeal Board (PTAB) as a forum to resolve patent disputes, Latham has established innovative, market-leading approaches to PTAB proceedings, securing success for clients...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