IPO published the following announcement on April 1st:
Today the U.S. Supreme Court announced that it is reversing its infamous 2014 decision on patent eligibility in Alice Corp. v. CLS Bank and remanding. The court took...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
Joinder Petitioners Have Standing To Appeal -
In Mylan v. Research Corporation Tech (RCT), the Patent Owner, who won at the PTAB, argued that time barred joinder petitioners (Mylan, Breckenridge and Alembic - Appellants)...more
In a precedential decision Realtime (page 8-9) and a follow-on non-precedential decision Polygroup (page 15), two Federal Circuit panels (with Dyk on each) appear to hold that a single two-reference obviousness Ground, when...more
2/27/2019
/ Alternative Pleadings ,
Appeals ,
Follow-On Patent Petitions ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Printed Publications ,
Statement of Grounds
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
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
Rule 36 is a single sentence affirmance. Yet to explain the impact of a Rule 36 decision on later filed cases, the Court needed to issue a 7-page precedential decision. In Virnetx v Apple the Court held Rule 36 creates...more
1/3/2019
/ Ambiguous ,
Appeals ,
Best Practices ,
Collateral Estoppel ,
Motion for Reconsideration ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Printed Publications ,
Rule 36
Recently, the Federal Circuit held that an ex-employee (of Cisco) who founded a competitor (Arista) can challenge their own assigned patent, finding that, after assignment, they are not the patent owner. The Court held that...more
1/2/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Assignor Estoppel ,
Employee Inventors ,
Exit Transactions ,
Inventors ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Reviewability Determinations
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
Despite changing claim construction to district court standard, where BRI had always been premised on the patent owners ability to amend, it appears the USPTO is responding to a half-decade of negative comments from the...more
A recent trend at the PTAB has shown timing is everything, and bad timing is held against Petitioner when considering discretionary denial....more
We will address the PTAB’s updated Standard Operating Procedures in greater depth in a future issue of this newsletter. Meanwhile, we want our readers to be aware of two important revisions to the PTAB Standard Operating...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
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
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
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
9/24/2018
/ § 315(b) ,
Administrative Procedure ,
Appeals ,
Best Practices ,
CAFC ,
International Trade Commission (ITC) ,
International Trade Disputes ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Time-Barred Claims
Sitting En Banc, the CAFC in Click-to-Call v. Ingenio held that complaints dismissed without prejudice can still trigger the time-bar of 35 U.S.C. 315(b)...more
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
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 a 56 page decision, including a concurrence, the Federal Circuit vacated and remanded based on finding that the Board failed to apply the law correctly by failing to properly consider evidence alleged to show that an RPX...more
On July 10, 2018, the PTAB informed the patent bar that they designated five decisions as informative for: issue preclusion; use of and versus or when referencing lists; DJ bar for joinder cases; depositions in foreign...more
7/26/2018
/ Administrative Procedure ,
Best Practices ,
Depositions ,
Ex Partes Reexamination ,
Foreign Language ,
Issue Preclusion ,
Joinder ,
Litigation Strategies ,
Motion To Seal ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents
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