In Qualcomm Inc. v. Intel Corp., the Federal Circuit held that Qualcomm was not afforded notice of, or an adequate opportunity to respond to, the Patent Trial and Appeal Board’s (PTAB’s) novel construction of an undisputed...more
On Monday, the justices ruled 5-4 that the “unreviewable authority” of administrative patent judges meant those APJs were appointed in violation of the Constitution’s appointments clause. The justices then ruled 7-2 that the...more
6/25/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
The Supreme Court ruled Monday that more than 200 administrative patent judges in the U.S. Patent and Trademark Office must be subject to greater supervision by the agency director in order to comply with the Constitution’s...more
In a precedential decision, the Federal Circuit held that Apple lacked standing to appeal from its loss as petitioner in a couple of inter partes reviews (IPRs) against patent owner Qualcomm.
Background -
Qualcomm sued...more
5/18/2021
/ Appeals ,
Apple ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
IP License ,
License Agreements ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Qualcomm ,
Standing
On April 22, 2021, the Supreme Court decided Carr v. Saul, a case with interesting parallels to Arthrex, which deals with appointments clause challenges to the PTAB judges and which will be decided later this Term. In Carr,...more
On December 2nd, amicus briefs in support of Smith & Nephew and the United States were filed with the Supreme Court in the Arthrex cases. There were also several amicus briefs filed in support of no party. Previous articles...more
Now that the Supreme Court has granted cert in Arthrex v. Smith & Nephew, patent owners and petitioners alike may be wondering what ramifications the Court’s decision may have on their proceedings. In this article, we...more
11/18/2020
/ 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 Trial and Appeal Board ,
Patents ,
Polaris Innovations Ltd v Kingston Technology Co ,
Principle Officers ,
SCOTUS ,
Severability Doctrine ,
Tenure ,
United States v Arthrex Inc
In a succinct opinion, the Federal Circuit ordered a remedy which raises questions thought to have been settled in SAS Institute Inc. v. Iancu, namely whether the Patent Trial and Appeal Board can address only some of the...more
Covered business method (CBM) review is scheduled to end on September 15 this year. Part of the Leahy-Smith American Invents Act, CBM review was envisioned as a transitional tool for accused infringers to challenge weak...more
In Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that 35 U.S.C. § 314(d) precludes judicial review of the PTAB’s decision to institute inter partes review (IPR) even on a petition filed beyond the 35...more
To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board (PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s major developments in a webinar on...more
1/23/2020
/ America Invents Act ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
PTAB Precedential Opinion Panel (POP) ,
Real Party in Interest ,
USPTO
With the Supreme Court in Oil States v. Greene’s Energy holding IPRs constitutional under Article III, and the Federal Circuit in Celgene v. Peter holding the retroactive use of IPRs against pre-AIA patents not to be an...more
11/4/2019
/ America Invents Act ,
Appointments Clause ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Takings Clause ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Practitioners are familiar with the typical submission process in America Invents Act (“AIA”) – Patent Trial and Appeals Board (“PTAB”) proceedings. First, the Petition is filed, and then the Patent Owner may submit a Patent...more
In a quartet of recent decisions, the Federal Circuit has confirmed that SAS Institute extends beyond mandating the inclusion of all claims when trial is instituted, and extends to all grounds as well. These decisions confirm...more
As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more
5/10/2018
/ Administrative Procedure ,
America Invents Act ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Partial Institution ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
On April 24, 2018, the Supreme Court issued its opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712, affirming the constitutionality of the U.S. Patent and Trademark Office’s (PTO) inter...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SCOTUS ,
Seventh Amendment ,
USPTO
On April 24, 2018, the Supreme Court issued its opinion in SAS Institute Inc. v. Iancu, No. 16-969, holding that when the U. S. Patent and Trademark Office (PTO) institutes an inter partes review (IPR), it must decide the...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
In a rare grant of a petition for rehearing en banc, the court decided that an appeal “warrants en banc consideration” of who bears what burden when amending in an IPR. In re: Aqua Products, No. 15-1177, slip op. at 2 (Fed....more
8/16/2016
/ America Invents Act ,
Appeals ,
Burden of Proof ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition For Rehearing
Several of our recent posts have discussed petitioners’ use of priority denial to attack patents with intervening prior art, but the issue of adequate support in an earlier filed application may also work in reverse against...more
This post was co-authored by Foley & Lardner Summer Associate Jonathan E. Robe.
Ever wonder how long it takes the PTAB to decide to institute trial? Ever have someone ask how long it will take for the Board to issue its...more
Today in In re Cuozzo Speed Technologies, LLC, No. 14-1301, a majority (Judges Dyk and Clevenger) affirmed the Patent Trial and Appeal Board’s (PTAB) decision to deem certain claims of a speed limit indicator patent...more