[co-author: Jamie Dohopolski]
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
3/7/2022
/ §315(e) ,
35 U.S.C. § 285 ,
America Invents Act ,
Attorney's Fees ,
Biologics ,
Biosimilars ,
Biotechnology ,
Chemical Compounds ,
Claim Construction ,
Collateral Estoppel ,
Constitutional Challenges ,
Corporate Counsel ,
Credibility ,
Declaration ,
Depositions ,
Enhanced Damages ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Exceptional Case ,
Expert Testimony ,
Expert Witness ,
Final Written Decisions ,
Hatch-Waxman ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventors ,
Life Sciences ,
Motion to Amend ,
Obviousness ,
Orange Book ,
Parallel Proceedings ,
Patent Applications ,
Patent Cancellation ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-AIA Patents ,
Printed Publications ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
Testimony ,
USPTO ,
USPTO Pilot Program ,
Vacated ,
Written Descriptions
In a non-precedential decision, Baker Hughes Oilfield Operations, LLC v. Hirshfeld, the Federal Circuit held that, under the Administrative Procedures Act, once the Board decided Ground 3 was too imprecise and would not be...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
9/29/2021
/ Administrative Patent Judges ,
Administrative Procedure Act ,
AIPLA ,
Evidence ,
Final Written Decisions ,
Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
LEAP ,
Mootness ,
Obviousness ,
Oral Argument ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Professional Development ,
USPTO ,
Young Lawyers
Depending on the filing rate in the second half of the year, 2021 could end up being the least active year for petition filing since 2013.
Currently, the number of petitions is on pace to approach 1,400, which would narrowly...more
[co-authors: Patrick Murray, Risa Rahman, and Jae Bandeh]
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...more
7/6/2021
/ Assignor Estoppel ,
Disciplinary Proceedings ,
Estoppel ,
Final Written Decisions ,
First Amendment ,
Inter Partes Review (IPR) Proceeding ,
Mahanoy Area School District v B.L. ,
Medical Devices ,
Minerva Surgical Inc. v Hologic Inc. ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Public Schools ,
SCOTUS ,
Snapchat ,
Student Speech ,
Students ,
Tinker v Des Moines Independent Community School Dist. ,
USPTO
In Olaplex, Inc. v L’Oréal USA, Inc. the Federal Circuit addressed, among other issues, PGR estoppel in subsequent district court litigation. Here, the Court addressed the timing to raise estoppel regarding written...more
6/8/2021
/ Claim Construction ,
Estoppel ,
Final Written Decisions ,
L'Oreal ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Post-Grant Review ,
Prior Art ,
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
6/3/2021
/ Claim Construction ,
Estoppel ,
Final Written Decisions ,
Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Inventors ,
IP License ,
L'Oreal ,
Obviousness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Philip Morris ,
Post-Grant Review ,
Prior Art ,
Remand ,
RJ Reynolds ,
Section 337 ,
USPTO ,
Vacated ,
Written Descriptions
In ABS Global, Inc. v Cytonome/ST, LLC, the Federal Circuit dismissed a Petitioner’s appeal from a U.S. Patent Trial and Appeal Board (“PTAB”) final written decision when it determined that a Patent Owner’s voluntary...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
1/25/2021
/ Appeals ,
Denial of Institution ,
Dismissals ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Mootness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Precedential Opinion ,
USPTO
As a follow up to our May 2020 article, and taking no side in this article, I write to remind the bar that on November 19, 2020 the Comment period ends for the latest Federal Register Notice on maybe the hottest topic at 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
11/18/2020
/ Comment Period ,
Federal Register ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand
In Network-1 Technologies, Inc. v. Hewlett-Packard Company, the Federal Circuit vacated and remanded the district court’s holding that joinder petitioner Hewlett Packard (“HP”) (1) could have tried to raise new grounds in its...more
10/26/2020
/ §315(e) ,
Appeals ,
Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Judgment As A Matter Of Law ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Vacated
Last month’s newsletter discussed Alacritech, Inc. v. Intel Corp, where patent owner Alacritech appealed a final written decision (FWD) of the Patent Trial and Appeal Board (“Board”) for inter partes review (IPR)...more
9/19/2020
/ Administrative Procedure Act ,
Appeals ,
Burden of Persuasion ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Invalidity ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Reaffirmation ,
Substantial Evidence Standard
In Alacritech, Inc. v. Intel Corp, Judge Stoll held that under the Administrative Procedure Act (APA) “[the Federal Circuit’s] review of a patentability determination is confined to ‘the grounds upon which the Board actually...more
In Personal Audio, the Federal Circuit upheld a district court judgment dismissal of a jury verdict for patent owner throwing out a $1.3 million judgement because the patent was later invalidated at the PTAB. Patent owner...more
2/11/2020
/ Appeals ,
Collateral Estoppel ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Jury Verdicts ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Reversal ,
Subsequent Litigation
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
A recent trend at the PTAB has shown timing is everything, and bad timing is held against Petitioner when considering discretionary denial....more
The Federal Circuit recently held in Nestlé II that it, and by implication the PTAB, should not relitigate claim construction even for indirectly related patents having different specifications....more
The U.S. Constitution guarantees due process before a person can be deprived of life, liberty, or property. The Administrative Procedure Act (APA) enforces the due process protection in the USPTO and Board proceedings. Under...more
1/19/2018
/ Administrative Procedure Act ,
Appeals ,
Claim Construction ,
Constitutional Challenges ,
Due Process ,
Final Written Decisions ,
Notice Requirements ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
The PTAB is starting to provide teeth to the Federal Circuit’s lead compound analysis making it more difficult for petitioners to successfully challenge chemical patents in AIA proceeding, as well as providing patent owners...more
The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more
11/17/2017
/ America Invents Act ,
Constitutional Challenges ,
Expert Witness ,
Final Written Decisions ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
SAS Institute Inc v Matal ,
SCOTUS