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
7/31/2020
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Nonobvious ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Precedential Opinion ,
PTAB Precedential Opinion Panel (POP) ,
Substitute Claims ,
USPTO
The Board made a rare reversal of an institution decision – turning a denial of institution into trial in Sand Revolution v . Continental Intermodal Group-Trucking, IPR2019-01393, Paper 24 (PTAB June 16, 2020). The denial had...more
Most readers have been following the impact of the Federal Circuit’s decision in Arthrex and know that an earlier and less developed Arthrex I case is on cert to the Supreme Court asking the Court to address the appointments...more
Since arriving at the USPTO, Director Iancu has tried to bring clear messages and consistency to the Office. For purposes of this article, we concentrate on the new POP procedures for Board case law and rules, and how the...more
In Acoustic Technology v. Itron Networked Solutions, the Federal Circuit was faced with a situation in which the Petitioner’s real party-in-interest/privy changed after institution, although the change was in the works before...more
3/24/2020
/ § 315(b) ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Record Preservation ,
Time-Barred Claims ,
Waiver Rule
In extraordinary times, sometimes the ordinary is comforting, so we want to bring you a short newsletter this month and provide some operating details for the major patent agencies in the US.
First, we hope all our...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
3/3/2020
/ Administrative Patent Judges ,
America Invents Act ,
Estoppel ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Litigation Strategies ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
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
2/1/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
CLS Bank v Alice Corp ,
Collateral Estoppel ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Jury Verdicts ,
Patent Trial and Appeal Board ,
Patents ,
Reversal ,
SCOTUS ,
Subsequent Litigation
The USPTO explained the significance of the cases as follows:
Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) – (precedential as to section III.C.5, first paragraph...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
In Return Mail, Inc. v. U.S. Postal Serv., 17-1594, Justice SOTOMAYOR wrote for the majority to overturn a Federal Circuit decision that the U.S. Postal Service had standing to petition for covered business method review. The...more
6/24/2019
/ Administrative Agencies ,
America Invents Act ,
Congressional Intent ,
Covered Business Method Proceedings ,
Ex Partes Reexamination ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
Reversal ,
SCOTUS ,
Standing ,
Statutory Interpretation ,
USPS
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
In AVX v Presidio, the Federal Circuit again found the Petitioner could not appeal a partial loss because it lacked standing to appeal as there was no underlying lawsuit on the patent involved in the IPR proceeding....more
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
In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more
5/28/2019
/ Claim Construction ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
Motion to Terminate ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Validity ,
Patents ,
Prior Art ,
Section 102 ,
Section 103 ,
Section 112 ,
Trial Court Orders
Eleven of thirteen cannabis patent claims survive PTAB challenge.
Insys Development Company, Inc. filed a petition requesting inter partes review of claims 1-13 of GW Pharmaceutical Ltd.’s patent directed to the use of...more
1/28/2019
/ Biopharmaceutical ,
Cannabidiol (CBD) oil ,
FDA Approval ,
Hemp ,
Inter Partes Review (IPR) Proceeding ,
Marijuana ,
Obviousness ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Pharmaceutical Patents ,
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
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
Measure twice cut once – the same can be said of the Petition in American Invents Act (“AIA”) proceedings. Time and again the Board and Federal Circuit[i] have used the Administrative Procedure Act[ii] (“APA”) – guaranteeing...more
8/24/2018
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Pleadings ,
Rebuttal ,
Trial Practice Guidance
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
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
As first discussed with the 50+ participants at the inaugural Global IP Strategy Conference held at our firm’s offices on Friday March 9, 2018, the Federal Circuit’s October en banc decision in Aqua Products Inc. v. Matal...more
On January 8, 2018, the Federal Circuit issued its long-awaited en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018). The issue before the en banc Court was the...more
1/25/2018
/ § 315(b) ,
Appeals ,
Claim Amendments ,
Cuozzo Speed Technologies v Lee ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Motion to Amend ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Time-Barred Claims
The PTAB Strategies and Insights 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...more
1/18/2018
/ § 315(b) ,
Administrative Procedure Act ,
Appeals ,
Design Patent ,
Due Process ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Non-Appealable Decisions ,
Notice Requirements ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Time-Barred Claims ,
USPTO