In a final rule package recently published by the US Patent and Trademark Office, the agency conformed the standard for construing unexpired claims under certain Patent Trial and Appeal Board proceedings to the Phillips...more
The US Court of Appeals for the Federal Circuit recently held en banc that the one-year time bar under 35 USC § 315(b) applies even when a properly served infringement complaint is dismissed without prejudice, thus barring...more
Up-to-date and well-informed insights into PTAB proceedings from our Intellectual Property practice’s PTAB Working Group.
Significant developments in 2017 include:
..Judicial review of institution decisions was expanded...more
The ruling in SAS Institute v. Iancu, which requires final written decisions on all or none of the challenged claims, will lead petitioners to carefully consider their strategy on which claims to challenge in an inter partes...more
Settling an inter partes review after a final written decision by the Patent Trial and Appeal Board may not result in the PTAB vacating the decision....more
The Federal Circuit recently reversed course and expanded judicial review of PTAB institution decisions to include time-bar determinations, potentially clearing a path for petitioners and patent owners to appeal other...more
1/11/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
Broadcom ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Time-Barred Claims ,
USPTO
The Court recently heard arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC on whether inter partes review—an adversarial process used by the US Patent and Trademark Office to determine the...more
The Court will consider whether the Patent Trial and Appeal Board must determine the unpatentability of all claims challenged by petitioners, or just those claims it has instituted review on, in inter partes review...more
A recent Federal Circuit ruling shifts the burden to petitioners, which will likely lead to patent owners filing more motions to amend....more
A recent expanded panel decision, which lists factors the PTAB will use in exercising its discretion to institute serial IPR petitions, is afforded an “informative” designation....more
Sovereign immunity is being invoked in an effort to halt inter partes reviews.
In two separate opinions earlier this year, the Patent Trial and Appeal Board (PTAB) held that an inter partes review (IPR) proceeding is a...more
The Federal Circuit recently held that the Patent Trial and Appeal Board is not constrained by parties’ proposed constructions and may, in fact, adopt an alternative construction that the Board raises for the first time at...more
The Federal Circuit recently held as a matter of first impression that statements made by a patent owner during an IPR proceeding can be considered for claim construction and relied upon to support a finding of prosecution...more
Recent patent reform legislation, rule changes, and court rulings are expected to have a significant impact on the strategies of both patent owners and petitioners....more
5/3/2017
/ America Invents Act ,
Claim Construction ,
Discovery ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Reform ,
Patent Trial and Appeal Board ,
Patent Wars ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
The new rules, which go into effect on May 2, 2016, will impact strategies for petitioners and patent owners alike.
On April 1, the US Patent and Trademark Office (Office) published a set of new rules for post-grant...more
The Federal Circuit recently held that petitioners will not be estopped from raising in subsequent proceedings any noninstituted grounds deemed “redundant” by the Board or otherwise denied without meritorious consideration....more
The Federal Circuit vacates a decision by the PTAB for relying on facts raised for the first time at oral argument.
Executive Summary -
On March 15, 2016, the US Court of Appeals for the Federal Circuit vacated...more
The PTAB issues its second round of proposed rule changes.
The Patent Trial and Appeal Board (PTAB) just issued its second round of proposed rule changes to post-patent issuance review proceedings (Inter Partes Reviews,...more
8/26/2015
/ Additional Discovery ,
America Invents Act ,
Claim Construction ,
Comment Period ,
Confidential Information ,
Covered Business Method Proceedings ,
Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Regulation ,
Rule 11 ,
USPTO