On November 15, 2023, Director of the United States Patent and Trademark Office (USPTO) Kathi Vidal designated as precedential the Patent Trial and Appeal Board’s (PTAB) final written decision in Penumbra, Inc. v. RapidPulse,...more
11/20/2023
/ America Invents Act ,
Anticipation ,
Appeals ,
Claim Construction ,
Final Written Decisions ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Applications ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
[co-author: Jamie Dohopolski]
Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
2/9/2022
/ § 314(d) ,
35 U.S.C. §315(e)(1) ,
Absolute Intervening Rights Doctrine ,
Abuse of Discretion ,
Administrative Patent Judges ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Appointments Clause ,
Arbitrary and Capricious ,
Article of Manufacture ,
Assignor Estoppel ,
Burden of Proof ,
Claim Construction ,
Collateral Estoppel ,
Commercial Success ,
Confidential Information ,
Constitutional Challenges ,
Demand Letter ,
Denial of Institution ,
Design Patent ,
Director of the USPTO ,
Dismissals ,
Doctrine of Prosecution Disclaimer ,
Due Process ,
Equitable Estoppel ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Executive Branch ,
Executive Powers ,
Federal Rules of Evidence ,
Final Written Decisions ,
Forum Selection ,
FRCP 52(c) ,
GATT ,
Inferior Officers ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Intervening Acts ,
Inventions ,
Issue Preclusion ,
Judicial Review ,
Lack of Authority ,
Lack of Jurisdiction ,
Likelihood of Success ,
Minerva Surgical Inc. v Hologic Inc. ,
Motion for Summary Judgment ,
Motivation to Combine ,
Nexus ,
Non-Disclosure Agreement ,
Nonobvious ,
Obviousness ,
Ornamental Design ,
Parallel Proceedings ,
Patent Applications ,
Patent Filings ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition for Writ of Certiorari ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-GATT ,
Preliminary Injunctions ,
Principle Officers ,
Printed Publications ,
Prior Art ,
Real Party in Interest ,
Remand ,
Reversal ,
Rule 36 ,
Scope of Review ,
SCOTUS ,
Section 325(d) ,
Sua Sponte ,
Substantial Evidence ,
Totality of Evidence ,
United States v Arthrex Inc ,
USPTO ,
Vacated ,
Writ of Mandamus
FanDuel petitioned for inter partes review (IPR) of certain claims of Interactive Games’ patent. The Patent Trial and Appeal Board instituted review and found all but dependent claim 6 to be unpatentable as...more
Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to largely continue its operations....more
2/3/2021
/ Administrative Patent Judges ,
Appeals ,
Certiorari ,
Constitutional Challenges ,
Estoppel ,
International Trade Commission (ITC) ,
Judicial Review ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Precedential Opinion ,
Real Party in Interest ,
United States v Arthrex Inc ,
USPTO ,
Waivers
[co-author: Kathleen Wills]
Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more
2/3/2021
/ Abbreviated New Drug Application (ANDA) ,
Adidas ,
Administrative Law Judge (ALJ) ,
Administrative Patent Judges ,
Administrative Proceedings ,
America Invents Act ,
Appeals ,
Appointments Clause ,
Certiorari ,
Claim Construction ,
Comcast ,
Constitutional Challenges ,
Corporate Counsel ,
Covenant Not to Sue ,
Denial of Certiorari ,
Dismissals ,
Due Process ,
Estoppel ,
Evidence ,
FanDuel ,
Final Written Decisions ,
Google ,
Hewlett-Packard ,
Hulu ,
Inter Partes Reexamination ,
International Trade Commission (ITC) ,
Judicial Review ,
Lack of Authority ,
Motion to Amend ,
Nike ,
Obviousness ,
Oral Argument ,
Patent Applications ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Precedential Opinion ,
Real Party in Interest ,
Section 337 ,
Subject Matter Jurisdiction ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
United States v Arthrex Inc ,
USPTO
These charts and graphs appear in the firm’s Federal Circuit Appeals From The PTAB: Summaries of Key 2019 Decisions report....
The steady decline in district court patent appeals that began in FY16 continued in FY19, while...more
In 2019, the U.S. Court of Appeals for the Federal Circuit docketed just over 650 appeals from the U.S. Patent and Trademark Office (USPTO). That is the highest number since the Court started to hear post-American Invents Act...more
Yesterday, in Arthrex, Inc. v. Smith & Nephew, Inc., a panel of the Federal Circuit unanimously held that the appointment scheme for the Patent Trial and Appeal Board’s (PTAB) Administrative Patent Judges (APJ) is...more
11/1/2019
/ Administrative Patent Judges ,
Appeals ,
Appellate Rules ,
Appointments Clause ,
Constitutional Challenges ,
Corporate Counsel ,
Director of the USPTO ,
Final Written Decisions ,
Judicial Appointments ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Pending Litigation ,
Presidential Appointments ,
Principle Officers ,
Remand ,
Remedial Actions ,
Removal At-Will ,
Secretary of Commerce ,
Senate Confirmation Hearings ,
Severability Doctrine ,
USPTO ,
Vacated
The inventor on the patent, Dr. Cheriton, was employed by Cisco as a technical advisor and chief product architect at the time he filed the application that led to the patent. Dr. Cheriton assigned all rights to the...more
RPX petitioned for inter partes review of ChanBond’s ’822 patent. The Board instituted the IPR and determined that RPX did not show any challenged claim to be unpatentable. RPX appealed the final written decision to the...more
3/14/2019
/ Appeals ,
Article III ,
Estoppel ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Non-Practicing Entities ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
Reputational Injury ,
Right To Appeal ,
SCOTUS ,
Standing ,
Statutory Rights
In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more
2/28/2019
/ § 315(b) ,
Adverse Judgments ,
Appeals ,
Article III ,
Assignor Estoppel ,
Burden of Proof ,
Burden-Shifting ,
Claim Construction ,
Collateral Estoppel ,
Corporate Counsel ,
Doctrine of Prosecution Disclaimer ,
Estoppel ,
Final Written Decisions ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Non-Appealable Decisions ,
Non-Practicing Entities ,
Obviousness ,
Oil States Energy Services v Greene's Energy Group ,
Partial Institution ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Printed Publications ,
Prior Art ,
Private Property ,
Public Rights Doctrine ,
Real Party in Interest ,
Right to a Jury ,
Right To Appeal ,
SAS Institute Inc. v Iancu ,
Section 101 ,
Section 102 ,
Section 103 ,
Seventh Amendment ,
Sovereign Immunity ,
Standing ,
Time-Barred Claims
In the wake of the Supreme Court’s decision in SAS Institute v. Iancu—which did away with the Patent Trial and Appeal Board’s (PTAB) partial-institution practice—parties and the Patent Office alike have been trying to...more
Dell Inc. v. Acceleron, LLC (“Dell II”), No. 2017-1101 (Fed. Cir. Mar. 9, 2018) -
On Tuesday, the Federal Circuit issued a precedential decision affirming the Board’s refusal to consider new arguments that had been made...more
4/5/2018
/ Administrative Procedure Act ,
Appeals ,
Cross-Appeals ,
Dell ,
Due Process ,
Inter Partes Review (IPR) Proceeding ,
Oral Argument ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Remand
The PTAB Strategies and Insights Newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.
This month we tackle three important...more
In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more
3/19/2018
/ § 315(b) ,
Administrative Procedure ,
Administrative Procedure Act ,
America Invents Act ,
Anticipation ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Burden of Persuasion ,
Burden of Proof ,
Claim Amendments ,
Claim Construction ,
Due Process ,
Ex Partes Reexamination ,
Expert Testimony ,
Final Written Decisions ,
Incorporation by Reference ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Notice Requirements ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Reaffirmation ,
Remand ,
Reversal ,
Substantial Evidence Standard ,
Vacated
Is there a growing split in the Federal Circuit on the proper remedy where the Patent Trial and Appeal Board (“Board”) fails to carry its burden? The recent precedential decision of In re Hodges, __ F.3d __, 2018 WL 817248...more
2/27/2018
/ Anticipation ,
Appeals ,
Burden of Proof ,
Claim Construction ,
Obviousness ,
Patent Applications ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Prior Art ,
Remand ,
Remedies ,
Reversal ,
Substantial Evidence
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
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
1/9/2018
/ § 315(b) ,
Appeals ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Time-Barred Claims
On November 16, 2017 the U.S. Patent and Trademark Office posted a new Standard Operating Procedure (SOP) addressing the conduct of cases remanded from the Federal Circuit to the Patent Trial and Appeal Board (PTAB). New “SOP...more
The Perspectives on the PTAB 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 sides...more
On November 16, 2017 the U.S. Patent and Trademark Office posted a new Standard Operating Procedure (SOP) addressing the conduct of cases remanded from the Federal Circuit to the Patent Trial and Appeal Board (PTAB). New “SOP...more
11/17/2017
/ Additional Discovery ,
Administrative Hearings ,
Administrative Procedure ,
Admissible Evidence ,
Appeals ,
Appellate Briefs ,
CAFC ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Rules ,
Remand ,
Standard Operating Procedures
For patent owners, the PTAB’s use of the “broadest reasonable interpretation” or “BRI” is often frustrating and sometimes fatal. That appeared to be the case for the patent owner Smith International, Inc., the owner of U.S....more
After several months of consideration, the U.S. Court of Appeals for the Federal Circuit sitting en banc in Aqua Products, Inc. v. Matal has concluded that, under the current rules, the U.S. Patent and Trademark Office is not...more
We are pleased to share this Perspectives on the PTAB newsletter. Its content is directed toward providing information and analysis of the decisions made by the Patent Trial and Appeal Board. We hope that this newsletter...more
7/8/2016
/ Admissible Evidence ,
America Invents Act ,
Appeals ,
Covered Business Method Proceedings ,
Declaration ,
Estoppel ,
Evidence ,
Expert Witness ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review