Once the PTAB institutes an IPR, the parties may only add supplemental information to the record by requesting authorization to file a motion to submit the information. See 37 C.F.R. § 42.123 (2022). If authorization is not...more
It is no secret that the Patent Trial and Appeal Board (PTAB) often leverages its discretionary denial powers to deny inter parties review (IPR) petitions. The PTAB has discretionarily denied IPR petitions, for example, due...more
On October 31, 2019 a panel of Federal Circuit Judges issued the Arthrex Inc. v. Smith and Nephew, Inc. opinion finding the appointment of PTAB judges unconstitutional by violating the Appointments Clause. The panel’s remedy...more
In April 2018, the United States Supreme Court held that the PTAB must issue a final written decision addressing every patent claim challenged in an IPR petition. See SAS Inst., Inc. v. Iancu, 138 S. Ct. 1348 (2018). In the...more
As an update to the May 15, 2018 post, available here, some post-SAS trends appear to be taking shape. For the five-month period from May 2018 through September 2018, the PTAB issued 538 institution decisions. Of these, the...more
Anyone reading this post is likely well aware that on April 24 the Supreme Court put an end to the PTAB’s practice of instituting inter partes review (IPR) on less than all claims challenged in an IPR petition in SAS...more
5/16/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
In a case of first impression, the PTAB recently decided that the doctrine of tribal sovereign immunity does not apply to inter partes review proceedings. See Mylan Pharmaceuticals Inc. v. Saint Regis Mohawk Tribe,...more
2/28/2018
/ Allergan Inc ,
FDA Approval ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Motion to Terminate ,
Mylan Pharmaceuticals ,
Native American Issues ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Industry ,
Sovereign Immunity ,
Tribal Governments
The PTAB has posted the AIA Trial Statistics through the end of calendar year 2017. The statistics are available for download at the PTO website....more
In a pair of near identical decisions issued on December 19, 2017, an expanded PTAB panel found that the Regents of the University of Minnesota had waived its defense of sovereign immunity by filing actions against the...more
1/9/2018
/ Educational Institutions ,
Eleventh Amendment ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Sovereign Immunity ,
Universities ,
USPTO
Section 103 does not, by its terms, define the “art to which [the] subject matter [sought to be patented] pertains,” but longstanding precedent couches this question of fact in terms of “whether the art is analogous or not.”...more
The Patent Trial and Appeal Board (PTAB) recently designated as informative three cases involving discretionary denial of inter partes review under 35 U.S.C. § 325(d). We previously profiled the case of Hospira, Inc. v....more
The Federal Circuit’s decision in Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., (Fed. Cir. No. 16-2321), expresses a growing discomfort with the Patent Office’s practice of joinder and expanded panels....more
8/25/2017
/ Administrative Law Judge (ALJ) ,
Appeals ,
Automotive Industry ,
Corporate Counsel ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Obviousness ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Statute of Limitations ,
USPTO
Less than four months after its decision in Covidien LP v. University of Florida Research Foundation Incorporated, finding that Eleventh Amendment sovereign immunity applies to PTAB proceedings, the Board has again dismissed...more