The United States Patent and Trademark Office (USPTO) has released new guidance on patent subject matter eligibility (the Guidance), with a particular focus on artificial intelligence (AI) and related technologies. As noted...more
In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more
In Dragon Intellectual Property LLC v. DISH Network LLC, the US Court of Appeals for the Federal Circuit addressed an “exceptional” set of circumstances concerning the recovery of attorney fees in district court litigation...more
The US Patent and Trademark Office (USPTO) this week issued a memorandum related to guidelines for examining patent claims with means-plus-function and step-plus-function limitations under 35 USC § 112(f). The memorandum...more
The US Court of Appeals for the Federal Circuit in Purdue Pharma L.P. v. Collegium Pharm. Inc. addressed a unique situation in November 2023 whereby the Patent Trial and Appeal Board failed to issue its Final Written Decision...more
The US Patent and Trademark Office (USPTO) has released comprehensive guidance on inventorship for artificial intelligence (AI)-assisted inventions. This guidance, instigated by the executive order Safe, Secure, and...more
The US Patent and Trademark Office (USPTO) recently issued an update to its procedures for interim Director Review (DR) of decisions by the Patent Trial and Appeal Board (PTAB), evidencing USPTO Director Kathi Vidal’s efforts...more
The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more
A recent Federal Circuit opinion clarified that patent owners carry the burden of proving that inter partes review (IPR) estoppel applies to invalidity grounds not included in their IPR petitions. The Federal Circuit also...more
US Patent and Trademark Office (USPTO) Director Katherine K. Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB or Board) in IPR2020-01234, which granted rehearing and modified the...more
Director of the US Patent and Trademark Office (USPTO) Kathi Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB) rejecting the petitioner’s invalidity challenge, since it was based...more
The US Court of Appeals for the Federal Circuit recently held that the Patent Trial and Appeal Board correctly considered evidence of multiple witnesses to be sufficient in corroborating actual reduction to practice when...more
The PTAB Digest 2021/2022 provides an overview of PTAB statistics, trends, and updates that impact strategies and business decisions for patent owners and petitioners alike.
Significant developments included the...more
The Patent Trial and Appeal Board recently granted the institution of an inter partes review in Samsung Electronics Co. v. Staton Techiya, LLC, despite the existence of a parallel proceeding in the US District Court for the...more
The USPTO has issued interim procedures curbing the PTAB’s discretionary denials over post-grant proceedings associated with parallel ITC proceedings or district court litigation. ...more
The Patent Trial and Appeal Board found in a recent inter partes review—DraftKings Inc. v. Interactive Games LLC—that DraftKings’ proposed combination of prior art would have been obvious when Interactive Games’ mobile...more
In Alarm.com Inc. v. Hirshfeld, the US Court of Appeals for the Federal Circuit ruled that decisions by the US Patent and Trademark Office Director vacating ex parte reexamination based on estoppel may be subject to judicial...more
The US Patent and Trademark Office is implementing a pilot program to allow participating applicants to defer responding to subject matter eligibility rejections until the earlier of a final disposition of the application, or...more
The US Patent Trial and Appeal Board on December 23, 2021, instituted an inter partes review even though an unrelated party had already unsuccessfully challenged the validity of the patent in district court. In the decision...more
The US Supreme Court issued its highly anticipated decision on June 21 in United States v. Arthrex, Inc., addressing whether the authority of administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) to...more
6/24/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
PTAB Precedential Opinion Panel (POP) ,
SCOTUS ,
United States v Arthrex Inc
In response to arguments made by the US government in an appeal pending before the US Supreme Court, members of Congress requested an investigation into the adequacy of due process afforded to Patent Trial and Appeal Board...more
6/9/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Director of the USPTO ,
Due Process ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
SCOTUS
As of 2020, post grant proceedings have been in use for eight 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 Patent and Trademark Office (USPTO) announced on December 4 a rule change to clarify and expand exceptions to small entity status, which primarily affects the fees that the USPTO charges patent applicants. ...more
It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more
12/28/2020
/ Administrative Patent Judges ,
America Invents Act ,
Article III ,
Burden of Persuasion ,
Burden of Proof ,
Intellectual Property Protection ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patents ,
Standing ,
Substitute Claims ,
USPTO
The US Supreme Court has granted certiorari in three cases relating to the US Court of Appeals for the Federal Circuit’s controversial October 2019 decision in Arthrex, Inc. v. Smith & Nephew, Inc. In Arthrex, the Federal...more
10/19/2020
/ 5 U.S.C. § 7513(a) ,
Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Polaris Innovations Ltd v Kingston Technology Co ,
Principle Officers ,
SCOTUS ,
Severability Doctrine ,
Tenure ,
United States v Arthrex Inc