The United States Patent and Trademark Office (USPTO) published guidance on the use of artificial intelligence-based tools in patent practice to inform practitioners of important issues when using Artificial Intelligence (AI)...more
The Patent Trial and Appeal Board (Board) has published an updated Oral Hearing Guide to reflect current practice before the Board. The changes include: Remote option for participating in America Invents Act (AIA) trials....more
In Commscope Techs. LLC v. Dali Wireless, Inc. the Director of the U.S. Patent Office issued a precedential decision that discretionary denial requires the Patent Trial and Appeal Board (PTAB) to perform the compelling merits...more
In Xerox Corp. v. Bytemark, Inc., the Director of the U.S. Patent and Trademark Office made precedential a prior decision of the Patent Trial and Appeal Board (the Board) over when an expert declaration from an inter partes...more
Executive Summary -
The patent application examination requirement is statutory based rather than a Constitutional requirement. For instance, from 1793 to 1836, the U.S. Patent System operated on a registration system...more
In American National Manufacturing Inc. v. Sleep Number Corporation, the Federal Circuit held that so long as a proposed claim amendment does not enlarge the scope of the claims, does not add new matter and is responsive to a...more
In CUPP Computing AS v. Trend Micro Inc., the Federal Circuit held that a disclaimer made in an inter partes review (IPR) proceeding was not binding in that proceeding, i.e., the disclaimer is not binding in the proceeding in...more
In Konda v. Flex Logix Technologies, Inc., the Federal Circuit held that a provisional application incorporated by reference in a Patent Cooperation Treaty (PCT) application was prior art against the later filed claims of the...more
The U.S. Patent and Trademark Office issued updated interim guidance on when the Patent Trial and Appeal Board (Board) may deny review of patents based on parallel litigation, which should provide clarity on when denials are...more
In California Institute of Technology v. Broadcom Limited,1 the Federal Circuit overruled prior precedent and clarified that inter partes review (IPR) estoppel applies not just to claims and grounds asserted in the petition...more
In Qualcomm Incorporated v. Apple Inc., the Federal Circuit held that applicant admitted prior art (AAPA) may not be the basis of an invalidity ground in an inter partes review (IPR), and therefore, an IPR petition cannot...more
In In re SurgiSil, LLP, the Federal Circuit held that a claimed design is limited to the particular article of manufacture identified in the claim. In this case, the court held that a design of an earlier tool did not...more
In United States v. Arthrex, Inc., the Supreme Court held that Patent Trial and Appeal Board (PTAB) administrative patent judges (APJs) are unconstitutionally appointed. However, the Court resolved the problem by making PTAB...more
12/7/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
In Raytheon Technologies Corporation v. General Electric Company, the Federal Circuit held that the Patent Trial and Appeal Board (Board) incorrectly invalidated a Raytheon turbine engine patent as obvious based on a...more
In Comcast Cable Communications, LLC v. Promptu Systems Corp., the Federal Circuit held that the plain meaning of the claim phrase “command function” was limited to functions that command an action to be taken. The meaning of...more
The U.S. Patent and Trademark Office (Patent Office) has issued final rules in inter partes review (IPR), post-grant review (PGR) and the transitional program for covered business method patents (CBM) proceedings...more
The Patent Trial and Appeal Board (Board) designated as precedential two decisions involving situations where the Board determined whether to institute review, using its discretion and based on whether review would be an...more
In In re: Google Technology Holdings LLC, the Federal Circuit held that Google forfeited its claim construction arguments made on appeal to the Patent Trial and Appeal Board (Board). The court explained that whether these...more
The U.S. Patent and Trademark Office (Patent Office) designated new Patent Trial and Appeal Board (Board) precedents protecting patent owners from multiple inter partes review (IPR) challenges. The Board decisions included...more
In Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court held that the Patent Trial and Appeal Board (Board) decision whether an inter partes review (IPR) petition was timely filed could not be appealed.
In a...more
5/28/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated