The only real answers we are hearing from the patent community is that no one knows what to do or what might happen next --- post Arthrex.
As a quick reminder – the Federal Circuit ruled (1) the current PTAB judges were...more
2/5/2020
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Administrative Proceedings ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Denial of Certiorari ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
Remand ,
Severability Doctrine ,
Split of Authority ,
USPTO
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
11/27/2019
/ § 315(b) ,
Administrative Patent Judges ,
Administrative Proceedings ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Evidence ,
Final Written Decisions ,
Litigation Strategies ,
Motivation to Combine ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Service of Process ,
Time-Barred Claims
Supplemental Examination was born out of fixing potential inequitable conduct issues before they are raised in a court proceeding. 35 U.S.C. § 257(a); 27 CFR § 1.601; M.P.E.P. § 2800. The stated goal is to improve patent...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
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
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
8/30/2019
/ § 315(b) ,
Administrative Proceedings ,
Estoppel ,
Inter Partes Reexamination ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Partial Institution ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Section 325(d) ,
Time-Barred Claims ,
USPTO
A third version of the Trial Practice Guide issued this week as both a Federal Register notice and updates....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
In Regents of the Univ. of Minn. v. LSI Corporation, Fed. Cir., No. 18-01559, the Federal Circuit extended the inability to stand behind 11th Amendment Sovereign Immunity to patents owned by individual states, such that they...more
6/25/2019
/ Administrative Proceedings ,
Appeals ,
Eleventh Amendment ,
Inter Partes Review (IPR) Proceeding ,
IP Assignment Agreements ,
IP License ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Sovereign Immunity ,
State Universities ,
Tribal Governments
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
6/21/2019
/ § 315(b) ,
Administrative Procedure ,
Administrative Proceedings ,
America Invents Act ,
Congressional Committees ,
Government Entities ,
Government Owned Intellectual Property ,
Inter Partes Review (IPR) Proceeding ,
Legislative Agendas ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Real Party in Interest ,
SCOTUS ,
Section 101 ,
Sovereign Immunity
Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues...more
5/29/2019
/ Administrative Proceedings ,
Amazon ,
Claim Construction ,
Discovery ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Prior Art
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
The PTAB added three new precedential decisions following an older precedential decision directed to acceptable circumstance for a petitioner to change the real party in interest during trial - even after a bar date has...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
4/25/2019
/ § 315(b) ,
Administrative Proceedings ,
America Invents Act ,
Inter Partes Reexamination ,
Motion To Stay ,
Patent Portfolios ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Real Party in Interest ,
Section 101 ,
USPTO
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
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
2/25/2019
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Defense Strategies ,
Joinder ,
Leave to Appeal ,
Litigation Strategies ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Right To Appeal ,
Standing
Total PTAB petition filings dropped to their lowest level since 2014, but the 2018 figure was still in the same range as each of the previous four years. For the second straight year, more PGRs than CBMs were filed, a trend...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
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
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
10/19/2018
/ Administrative Law Judge (ALJ) ,
Administrative Procedure ,
Administrative Proceedings ,
Burden-Shifting ,
Claim Construction ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
Phillips Standard ,
Right To Appeal ,
Standard of Review ,
Standing
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
U.S. Court of Appeals for the Federal Circuit affirmed a U.S. Patent Trial and Appeal Board (PTAB) decision finding that tribal sovereign immunity does not apply to Inter Partes Review (IPR) proceedings. In so holding, the...more
7/25/2018
/ Adjudicatory Process ,
Administrative Agencies ,
Administrative Proceedings ,
Allergan Inc ,
Appeals ,
Enforcement Actions ,
Inter Partes Review (IPR) Proceeding ,
IP Assignment Agreements ,
Motion to Dismiss ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
You selected your experts – Ms. Boot (an expert for the patent owner, SneakRTech) and Dr. Slipper, PhD (an expert for the Petitioner, BadGuys) - to assist SneakRTech at the PTAB in cases involving aglet patents against...more
7/24/2018
/ Administrative Proceedings ,
Claim Construction ,
Cross Examination ,
Declaration ,
Expert Witness ,
Litigation Strategies ,
Noninfringement ,
Patent Infringement ,
Patent Owner Preliminary Response ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents
Is the appointment of PTAB administrative patent judges (APJs) constitutional? The patent bar is asking in the wake of the Supreme Court’s decision in Lucia v. SEC....more
7/23/2018
/ Administrative Law Judge (ALJ) ,
Administrative Patent Judges ,
Administrative Proceedings ,
Appointments Clause ,
Constitutional Challenges ,
Executive Orders ,
Lucia v SEC ,
Officers of the United States ,
Patent Trial and Appeal Board ,
Patents ,
Securities and Exchange Commission (SEC) ,
Trump Administration ,
USPTO
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
7/20/2018
/ Administrative Law Judge (ALJ) ,
Administrative Procedure ,
Administrative Proceedings ,
Appeals ,
Constitutional Challenges ,
Depositions ,
Expert Witness ,
Issue Preclusion ,
Joinder ,
Litigation Strategies ,
Lucia v SEC ,
Motion To Seal ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Sanctions ,
SCOTUS ,
USPTO