Under 35 U.S.C. § 311(b), a Petitioner may challenge the validity of an issued patent in an IPR proceeding “only on the basis of prior art consisting of patents or printed publications.” Public accessibility has been held to...more
The USPTO published a Notice of Proposed Rulemaking (NPR) on Friday proposing new rules governing pre-issuance internal circulation and review of decisions within the PTAB. 88 Fed. Reg. 69578-69583 (Oct. 6, 2023). The Office...more
PTAB petitioners frequently assert that claims are invalid as obvious over a combination of prior art references. A threshold requirement in any obviousness inquiry is whether the prior art constitutes analogous art. On...more
The USPTO issued Revised Interim Guidelines today on the process for requesting Director Review of PTAB decisions. Since the U.S. Supreme Court’s decision in United States v. Arthrex, 141 S.Ct. 1970 (2021), which held that...more
On April 20, 2023, the USPTO announced Advance Notice of Proposed Rulemaking for potential PTAB reforms. The goal of the Notice was to seek public input regarding proposed changes to discretionary institution practices,...more
Director Vidal issued a new precedential decision yesterday, reversing an adverse judgement order against the patent owner Zipit Wireless, Inc. in Apple v. Zipit Wireless, IPR2021-01124, Paper 14 (PTAB Dec. 21, 2022). In the...more
Kilpatrick Townsend's Justin Krieger recently spoke on "PTAB Update: The Waning Impact of Fintiv on Discretionary Denials". These are the 5 key takeaways from his presentation....more
Institution is Discretionary -
35 USC §§ 314, 324 provide that the Director “may not authorize” a PTAB proceeding “unless” the petition shows that there is a “reasonable likelihood” (for IPR) or that it is “more likely...more
CalTech v. Broadcom. You may have read multiple articles about how the Feb. 4, 2022 precedential opinion of the CAFC in California Institute of Technology v. Broadcom Limited, et al., 20-2222 (“CalTech v. Broadcom”) widened...more
First, a bit of background. Inter-Partes Review (IPR) estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e). In 2018, The Shaw decision...more
Today, in an opinion by Chief Justice Roberts, the Supreme court issued its opinion in U.S. v. Arthrex, Inc., vacating the Federal Circuit's opinion in Arthrex v. Smith and Nephew. The Court agreed with the Federal Circuit...more
6/22/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
Under AIA 35 U.S.C. § 112(b), a patent specification “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the...more
Yesterday, the Precedential Opinion Panel (POP) designated two PTAB decisions as precedential and one as informative. The decisions relate to the Board’s discretion in instituting trial under 35 U.S.C. § 314 where the...more
On February 6, Kilpatrick Townsend’s Justin Krieger spoke on the IPO Chat Channel on the USPTO’s new Motion to Amend (MTA) Pilot Program and on prosecution related options for amending claims outside of IPR proceedings.
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On July 10, 2019, the PTAB’s Precedential Opinion Panel designated Focal Therapeutics, Inc. v. Senorx, Inc., IPR2014-00116, Paper 19 (PTAB July 21, 2014), as precedential. By way of background, during PTAB proceedings, direct...more
Yesterday (July 15th), the PTAB published a second update to its Trial Practice Guide. This second update is twice as long as the August 2018 update and relies extensively on the many recently-designated precedential and...more
In October of 2017, the Federal Circuit issued an en banc decision in Aqua Products Inc. v. Matal, holding that patent owners no longer bear the burden of proving patentability of their amended claims. Instead, the burden...more
On May 20, 2019, the PTAB exercised its discretion under 35 U.S.C. § 314 and denied one of two related petitions filed on the same day by a petitioner challenging the same patent. Comcast Cable Communications LLC v. Rovi...more
On October 29, 2018, the US Patent & Trademark Office (USPTO or Office) issued a Notice requesting comments on proposed modifications to motion to amend (MTA) practice. The Office received a number of comments and questions...more
The US Patent and Trademark Office (USPTO) implemented a new pilot program on March 15, 2019 concerning motion-to-amend practice in America Invents Act (AIA) trials, including post-grant review (PGR), inter partes review...more
The Patent Trial and Appeal Board (PTAB) has been busy, designating three decisions as precedential on Monday after designating two decisions as precedential earlier this month. Two of the decisions involve the substantive...more
In a widely-anticipated decision, the U.S. Supreme Court held yesterday that the America Invents Act (AIA) did not change the scope of the on-sale bar to patentability. The unanimous decision, authored by Justice Thomas, held...more
Kilpatrick Townsend attorneys Justin Krieger and Nicki Kennedy recently spoke at the Kilpatrick Townsend Intellectual Property Seminars on the topic of “Helsinn v. Teva: The Status of Secret Prior Art and the On-Sale...more
Earlier today, the United States Patent & Trademark Office published its final rule package changing the claim construction standard used in AIA trials, replacing the broadest reasonable interpretation (“BRI”) claim...more
The PTAB has long been hesitant in granting motions to amend. But a recent review of motion to amend statistics shows that they are being granted with greater frequency—with a notable uptick since February. Although it’s...more