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
In B/E Aerospace, Inc. v. C&D Zodiac, Inc., published June 26, the US Court of Appeals for the Federal Circuit affirmed a final written decision of the US Patent and Trademark Office’s Patent Trial and Appeal Board...more
In a recent opinion in ESIP Series 2, LLC v. Puzhen Life USA, LLC, the US Court of Appeals for the Federal Circuit determined that 35 USC 314(d), which bars appellate review of US Patent and Trademark Office decisions to...more
The decision by the Patent Trial and Appeal Board illustrates the dangers in waiting until the last day of the one-year statutory bar to file a petition, and the importance of double checking the filed documents on the PTAB’s...more
The Patent Trial and Appeal Board recently provided further guidance on what is needed to establish that a nonpatent reference is a prior art printed publication. ...more
The Patent Trial and Appeal Board recently designated two decisions as precedential and a third as informative in cases where the PTAB considered whether to exercise 35 USC § 325(d) discretion to deny petitions where the same...more
In a welcome ruling for internet companies undergoing patent infringement suits, the US Court of Appeals for the Federal Circuit weighed in regarding what it means to have a “regular and established place of business” under...more
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