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PTAB Strategies and Insights - March 2020

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

PTAB Strategies and Insights - February 2020

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

PTAB Strategies and Insights - January 2020: IPR Kills Another Jury Verdict

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

PTAB Strategies and Insights - January 2020: Chaos All Around - Arthrex and Alice

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

PTAB Strategies and Insights - January 2020

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

PTAB Strategies and Insights - November 2019

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

PTAB Strategies and Insights - October 2019: Graphical Snapshot of Supplemental Examination

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

PTAB Strategies and Insights - October 2019

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

PTAB Strategies and Insights - September 2019

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

PTAB Strategies and Insights - August 2019. The USPTO Recently Issued Two Precedential and One Informative Decision Regarding...

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

PTAB Strategies and Insights - August 2019: PTAB Extends Discretionary Denial Factors to Parallel ITC Proceedings

In IPR2019-00567 (Paper 23 at 29-30) and IPR2019-00568 (Paper 22 at 23-24), the PTAB, for potentially the first time, denied institution partially based on the Petitioner raising the same issues in its Petition that had been...more

PTAB Strategies and Insights - August 2019: Reexaminations are Terminated Because Invalidity Issues Were Finally Resolved in Court...

The Federal Circuit recently decided a reexamination case, VirnetX v. Apple and Cisco, that addressed two issues: (1) was requester estopped from maintaining its reexams under the pre-AIA version of 35 U.S.C. § 317(b) (2006)...more

PTAB Strategies and Insights - August 2019

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

PTAB Strategies and Insights - July 2019: Updated Trial Practice Guide

A third version of the Trial Practice Guide issued this week as both a Federal Register notice and updates....more

PTAB Strategies and Insights - July 2019: Are the DMV Sloths From Zootopia Reflective of the Pace for Reissue Applications from...

The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more

PTAB Strategies and Insights - July 2019

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

PTAB Strategies and Insights - June 2019: States Must Face IPR Challenges Similar to Tribes

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

PTAB Strategies and Insights - June 2019

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

PTAB Strategies and Insights - May 2019: Court Again Finds Petitioner Had No Standing To Appeal From Partial Win at PTAB

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

PTAB Strategies and Insights - May 2019: Board Immediately Distinguishes Precedential NHK Decision in Amazon Institution Decision

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

PTAB Strategies and Insights - May 2019: Court's Infringement Indefiniteness Does Not Dictate Validity Indefiniteness at PTAB

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

PTAB Strategies and Insights - May 2019

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

PTAB Strategies and Insights - April 2019: USPTO Provides Guidance on Reissue and Reexam Stays during AIA Trials

The USPTO issued guidance regarding procedures to stay when reissue or reexaminations are pending during a parallel AIA proceeding. The basic factors that will be considered are...more

PTAB Strategies and Insights - April 2019: Petitioners Can Change RPI after 315(b) Bar Date

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

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