In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow....more
As we discussed in a previous newsletter, the Legal Experience and Advancement Program (LEAP) is a tremendous success for the PTAB, practitioners, and clients alike. In a little over 18 months, less experienced...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
12/1/2021
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
LEAP ,
Notice and Comment ,
Oral Argument ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Subject Matter Jurisdiction ,
USPTO ,
Writ of Mandamus
Defendants sued for patent infringement in district court commonly seek litigation stays based on an American Invents Act (AIA)-contested proceeding that assesses the validity of the patents-in-suit before the Patent Trial...more
Powerful. Resilient. Ever-evolving. These characteristics of the Patent Trial and Appeal Board (PTAB) were on full display in 2019. This past year the PTAB received more than 1,300 inter partes review (IPR), post grant review...more
3/5/2020
/ Claim Construction ,
Concurrent Litigation ,
Constitutional Challenges ,
Corporate Counsel ,
Covered Business Method Proceedings ,
Design Patent ,
Estoppel ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Motion To Stay ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trial Practice Guidance
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more
3/18/2019
/ Administrative Procedure ,
Administrative Proceedings ,
America Invents Act ,
Burden of Persuasion ,
Discovery ,
Filing Deadlines ,
Motion to Amend ,
New Guidance ,
Patent Owner Preliminary Response ,
Patents ,
Revised Motion To Amend (rMTA) ,
Rules of Practice ,
USPTO ,
USPTO Pilot Program
With their proposed new procedure, the USPTO hopes to make claim amendments via a motion to amend more of a reality for patent owners in PTAB trials....more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
12/28/2018
/ Administrative Proceedings ,
Assignor Estoppel ,
Collateral Estoppel ,
Employee Inventors ,
Employment Contract ,
Exit Transactions ,
Former Employee ,
Litigation Strategies ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Rule 36 ,
Work-For-Hire
Despite changing claim construction to district court standard, where BRI had always been premised on the patent owners ability to amend, it appears the USPTO is responding to a half-decade of negative comments from the...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
On October 26, 2018, the United States Patent and Trademark Office (USPTO) issued a Request for Comment on proposed changes to motion to amend practice in AIA trials. The Office states that its goal in proposing these changes...more
When faced with allegations of patent infringement at the International Trade Commission (ITC), a respondent must quickly evaluate whether or not to request an AIA review (hereinafter, inter partes review for convenience) at...more
9/26/2018
/ § 315(b) ,
Administrative Law Judge (ALJ) ,
America Invents Act ,
Clear and Convincing Evidence ,
Collateral Estoppel ,
Exclusion Orders ,
Imports ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Issue Preclusion ,
Litigation Strategies ,
Motion To Stay ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Section 101 ,
Section 112 ,
Statute of Limitations ,
Time-Barred Claims ,
Written Descriptions
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
9/24/2018
/ § 315(b) ,
Administrative Procedure ,
Appeals ,
Best Practices ,
CAFC ,
International Trade Commission (ITC) ,
International Trade Disputes ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Time-Barred Claims
Stratasys asserted four of its 3D printing patents against Afinia in the U.S. District Court of Minnesota. Afinia responded by petitioning for inter partes review (IPR) of the asserted patents. Yet, Stratasys escaped...more