Almost 15 years ago, in an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules (“LPR”).1 This annotated version of the LPRs is released...more
Just because a document is archived on the Internet Archive’s Wayback Machine® does not necessarily qualify it as prior art for an IPR challenge. ...more
The USPTO hosted a “Boardside Chat” on June 15, 2023, to discuss the Motion to Amend Pilot Program, including the recent call for public input on the PTAB’s existing claim amendment procedures and potential rule changes. The...more
The Supreme Court will not consider a challenge to the proper scope of AIA statutory estoppel, leaving the Federal Circuit’s governing interpretation in place. The Court’s June 26, 2023 order list denied the pending petition...more
What invalidity grounds is a petitioner barred from raising in parallel district court or ITC litigation after the petitioner previously challenged the patent and the PTAB has issued a final written decision? The U.S....more
The Federal Circuit has upheld the PTAB’s relatively liberal approach to proposed claim amendments in an IPR, holding that so long as a proposed substitute claim includes an amendment made in response to an unpatentability...more
The United States Patent and Trademark Office (USPTO) has again extended the Motion to Amend (MTA) Pilot Program at the Patent Trial and Appeal Board (PTAB)....more
PGR petition filings were up slightly over the prior USPTO fiscal year, but the long-term historical trend continues to show that PGR challenges remain relatively infrequent....more
A Post-Grant Review can be used to challenge newly-issued patents on wide-ranging grounds, but PGRs remain relatively unpopular: statutory estoppel may be a reason why....more
In post-grant proceedings since 2018, the PTAB has applied the same claim construction standard as used in district court; a recent Memorandum confirms the PTAB will likewise apply the same standard that district courts use...more
If the PTAB judges who denied institution of an IPR were unconstitutionally appointed under Arthrex at the time they issued that decision, does the petitioner get a second chance with a new panel of different PTAB judges? As...more
Means-plus-function claim limitations can present troublesome § 112 issues for IPR petitioners, and a recent PTAB decision further demonstrates how § 112 problems can derail an IPR petition. Samsung Electronics America, Inc....more
While acknowledging an “apparent loophole” in the America Invents Act, a district court has permitted an accused-infringer-DJ-plaintiff to pursue counterclaims for patent invalidity—with no bar on later seeking an IPR at the...more
On March 23, 2020, the Federal Circuit denied rehearing and rehearing en banc in Arthrex. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order Denying Rehearing and Rehearing En Banc, Dkt. 115. The court held in Arthrex...more
On Monday, March 23, 2020, the Federal Circuit denied rehearing and rehearing en banc in the Arthrex appeal that found PTAB ALJs to be unconstitutional appointments. Arthrex, Inc. v. Smith & Nephew, Inc., No. 18-2140, Order...more
In view of Arthrex, can an unsuccessful petitioner get a do-over of a PTAB decision denying institution of an IPR? The USPTO says no, and the Federal Circuit has been asked to consider the question in United Fire Protection...more
2/3/2020
/ Appointments Clause ,
Denial of Institution ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
SAS Institute Inc. v Iancu ,
Unconstitutional Condition ,
USPTO ,
Vacated
While PTAB proceedings are ordinarily decided “on the papers,” in certain rare cases the Board will permit live witness testimony at the oral hearing.
The Board’s precedential decision in K-40 v. Escort explains that...more
12/4/2019
/ Evidence ,
Expert Testimony ,
Live Streaming ,
New Evidence ,
Oral Argument ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Prior Art ,
Testimonial Statements ,
Trial Practice Guidance ,
Witnesses
Ten years ago, in an effort to create greater predictability for patent litigation in the Northern District of Illinois, the District enacted Local Patent Rules ("LPR") This annotated version of the LPRs is released in honor...more
11/5/2019
/ Claim Construction ,
Discovery ,
Electronically Stored Information ,
Federal Rules of Civil Procedure ,
Local Patent Rules ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pleading Standards ,
State and Local Government ,
State Pilot Programs
After SAS, does institution of an IPR make a district court more or less likely to stay a parallel litigation? Maybe, maybe not.
In its April 2018 decision in SAS Institute v. Iancu, the U.S. Supreme Court ruled that the...more
Is the little-used CBM patent review program the key to passage of § 101 legislation?
Congress is currently considering legislation to drastically alter the patent eligibility statute, 35 U.S.C. § 101.
The unabashed...more
We recently posted about the panel opinion in Amazon.com v. Uniloc, a final written decision demonstrating how the PTAB has given heightened scrutiny to proposed substitute amended claims in an IPR. In addition to assessing...more
An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more
2/11/2019
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 101 ,
Section 102 ,
Section 103 ,
Section 112
Estimates are that roughly 80% of IPRs involve a challenge to a patent being asserted against the petitioner in a district court litigation. Typically, in those IPRs, if the litigation-defendant-petitioner loses at the PTAB,...more
The PTAB may institute IPR proceedings only on the basis of certain prior art that is potentially invalidating under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute IPR on any other unpatentability grounds,...more
The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more
9/11/2018
/ §315(e) ,
Administrative Procedure ,
Claim Construction ,
Estoppel ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Means-Plus-Function ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Prior Art ,
Section 112 ,
USPTO