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USPTO Considering Changes to Enforceability of Patents Subject to a Terminal Disclaimer

On 10 May 2024, the United States Patent and Trademark Office (USPTO) published a Notice of Proposed Rulemaking aimed at changing the current practices surrounding terminal disclaimers. The proposed change could have...more

PTAB’s Motion to Amend Patentability Powers

In a 2-1 split decision on Wednesday, July 22, 2020, the Federal Circuit confirmed that the Patent Trial and Appeal Board (“PTAB“) had the authority to reject substitute claims under 35 U.S.C. §§ 101 and 112, statutory...more

Unconstitutionality of PTAB Judges Corrected by Federal Circuit

In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275....more

A Win is a Win!

B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case. More particularly, the Federal Circuit explained how to determine whether a party is “the...more

St. Regis Mohawk Tribe Petition for Centiorari Denied

On April 15, 2019, the Supreme Court of the United States denied the petition for certiorari filed by the St. Regis Mohawk Tribe....more

The Supreme Court Upholds and Clarifies Inter Partes Review

Tuesday, April 24, 2018, proved to be a banner day for inter partes review (“IPR”) proceedings. The United States Supreme Court issued two separate opinions addressing the regime, the first upholding the constitutionality of...more

Changing Tides: The Federal Circuit Reverses the Aqua Products Decision and Shifts the Burden to the Petitioner for Proving...

In August of 2016, the Federal Circuit granted Aqua Products, Inc.’s (“Aqua Products”) petition for rehearing en banc on the issue of whether the patent owner bears the burden of persuasion of patentability when amending...more

Coming Home?: Federal Circuit Asked to Immediately Weigh in on Proper Venue Post-TC Heartland

In a case pending in the Eastern District of Virginia, set to begin trial on June 12, 2017, the defendants filed a motion to transfer the case to the Eastern District of Tennessee following the Supreme Court’s decision in TC...more

Be Careful What You Wish For: Federal Circuit Says Statements Made During IPR Can Limit Scope of Patent

The Federal Circuit on May 11, 2017, addressing the question for the first time, held that statements made by a patent owner during inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”) can...more

Setting Up the Scope of IPR Estoppel for the Federal Circuit

On January 11, Judge Sue L. Robinson issued her final decision on statutory estoppel in district court post-inter partes review (“IPR”) proceeding, confirming her decision on summary judgement of invalidity and cross motion...more

Supreme Court Signals Shift in Approach to Damages in Design Patent Infringement Cases

In its first design patent case in over a century, the Supreme Court on Tuesday, December 6, 2016, reversed a damages award Apple Inc. (“Apple”) had won over Samsung Electronics Co., Ltd. (“Samsung”) in their protracted...more

Federal Circuit Confirms Cuozzo Does Not Disturb § 314(d) Bar on Appellate Review of PTAB Reconsideration of IPR Institutions

The Federal Circuit’s recent decision in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., addressed the effect of the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), on the issue...more

Practical Implications from the Federal Circuit’s Rare en Banc Reversal in Apple v. Samsung

In a precedential opinion issued en banc on Friday, October 7, 2016, the Federal Circuit overturned a panel decision, affirming and reinstating the district court’s judgment and the jury’s verdict. The majority opinion...more

The Start of Something Big? PTAB Issues First PGR Final Decisions

Post Grant Review (“PGR”) is a Patent Trial and Appeal Board (“PTAB”) proceeding established under 35 U.S.C. § 321 that permits the PTAB to review the patentability of claims in a patent based on any grounds under 35 U.S.C. §...more

Cuozzo Furthers the USPTO’s Authority in Managing Its Agency Proceedings

In the much-anticipated United States Supreme Court decision this week, Cuozzo Speed Tech., LLC v. Lee, the Supreme Court upheld two important aspects of practice before the Patent Trial and Appeal Board (“PTAB”). ...more

What You Need to Know About the Recent Federal Circuit Rule Changes

The U.S. Court of Appeals for the Federal Circuit recently implemented significant amendments to its Rules of Practice (“Rules”). The changes apply to all cases docked on or after April 1, 2016. In large part, the...more

PTAB Lays Initial Groundwork for Post-Remand Proceedings

In a key development regarding Inter Partes Review (IPR) procedure, on September 1, 2015, the Patent Trial and Appeal Board (the “Board”) issued an order that lays the groundwork for how the Board may address cases on remand...more

USPTO Announces Second Round of AIA Rule Changes

On August 20, 2015, the Patent and Trademark Office published, in the Federal Register, a set of “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board” that would amend 37 CFR Part 42. Among...more

Inter Partes Review Client Alert Series: Amending Claims During Inter Partes Review

The Patent Trial and Appeal Board continues to make clear that amending claims during post-grant inter partes review (“IPR”) challenges is far different from amending claims during original examination or reexamination. The...more

Five Lessons Learned at a PTAB Hearing

Following a recent hearing involving K&L Gates’ lawyers before the Patent Trial and Appeal Board (“PTAB”) on behalf of the patent owner in an inter partes reexamination, several key practice tips emerged that may be useful as...more

Major Patent Law Changes First-to-File Provisions - Effective March 16, 2013

On Saturday, March 16, 2013, the “first-inventor-to-file” provisions of the Leahy-Smith America Invents Act (“AIA”) go into effect. These provisions replace the current “first-to-invent” system. In addition to various other...more

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