A recent decision by the US Court of Appeals for the Federal Circuit suggests that petitioners who unsuccessfully challenge patents in an inter partes review (IPR) at the Patent Trial and Appeal Board (PTAB) cannot rely on...more
As of 2019, post-grant proceedings have been in use for seven years. Designed as an alternative to district court litigation, post-grant proceedings have offered litigants a faster and more cost-effective forum for resolving...more
The US Court of Appeals for the Federal Circuit recently held that the statutory scheme governing the administrative patent judges of the Patent Trial and Appeal Board is in violation of the Appointments Clause of the US...more
New and developing efforts by Congress may change the way patent subject matter eligibility is determined for years to come, changing the landscape for medical diagnostic methods. This congressional action comes following...more
The Federal Circuit Court of Appeals recently held that the Section 315(b) time-bar analysis must assess privity and real-party-in-interest relationships that arise after the filing of an inter partes review petition;...more
While stating that live testimony will generally not be necessary, the Patent Trial and Appeal Board (PTAB) identifies “very limited circumstances” where live testimony before the board may be permitted....more
A panel of the US Patent Trial and Appeal Board has identified “limited circumstances” in which a patent challenger can join its own inter partes review petition to add new issues. Parties seeking to join their own petitions...more
The US Patent and Trademark Office (USPTO) on January 4 announced the “2019 Revised Patent Subject Matter Eligibility Guidance” and “Computer-Implemented Functional Claim Limitations Guidance” for examiners and administrative...more
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
The US Court of Appeals for the Federal Circuit in In re: Power Integrations, Inc. holds that mandamus actions are not available to allow a “disappointed petitioner [to] by-pass the statutory bar on appellate review simply by...more
The first update to the Patent Trial and Appeal Board Trial Practice Guide includes guidance that will benefit both petitioners and patent owners, from updates regarding expert testimony and motions to exclude and to strike,...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 decision of the US Court of Appeals for the Federal Circuit in Aatrix Software, Inc. v. Green Shades Software, Inc. clarified that although Section 101 of the US Patent Act is ultimately a question of law, it may involve...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