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
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
On May 5, 2020 the Federal Circuit formally barred petitioners from seeking Arthrex remands. The Court issued a precedential order clarifying that only qualifying patent owners may seek the Arthrex remedy. Petitioners, unlike...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
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
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 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
A Covered Business Method (“CBM”) patent review permits a petitioner to challenge a patent having claims “used in the practice, administration, or management of a financial product or service,” and that do not claim a...more
In yesterday’s en banc decision in Wi-Fi One v. Broadcom Corp., Nos. 15-1944, -1945 & -1946 (Fed. Cir. Jan. 8, 2018), the en banc Federal Circuit addressed issues regarding judicial review of the PTAB’s time-bar...more
1/10/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Time-Barred Claims ,
USPTO
In yesterday’s decision in Aqua Products, Inc. v. Matal, No. 15-1177 (Fed. Cir. Oct. 4, 2017) (en banc), the Federal Circuit issued five opinions, spanning 148 pages, addressing the question of who bears the burden of proving...more
10/6/2017
/ Appeals ,
Burden of Persuasion ,
Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Remand ,
Reversal ,
USPTO
...In a recent (and rare) precedential decision, the Board reaffirmed that the Supreme Court’s decision in Nautilus does not change “the USPTO’s long-standing approach to indefiniteness” in the context of pre-issuance...more
9/2/2017
/ Administrative Procedure ,
Appeals ,
Claim Construction ,
Indefiniteness ,
Nautilus Inc. v. Biosig Instruments ,
Patent Examinations ,
Patent Litigation ,
Patents ,
Precedential Opinion ,
Section 112 ,
Standard of Review ,
USPTO
As we reported earlier, the Federal Circuit decided in January 2017 to rehear en banc whether the PTAB’s findings regarding 35 U.S.C. § 315(b)’s one year bar can be reviewed on appeal. Wi-Fi One v. Broadcom Corp. The...more
4/8/2017
/ En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Reviewability Determinations ,
Statute of Limitations ,
Time-Barred Claims ,
USPTO