In Carr v. Saul, the U.S. Supreme Court unanimously held that a party can raise a challenge under the Constitution’s Appointments Clause to an Administrative Law Judge’s (“ALJ”) decision, even if the party did not raise the...more
Partners Matt Johnson and Sarah Geers talk about former USPTO Director Andrei Iancu's impact on the PTAB, and what we might expect from a new director under the Biden Administration. They also comment on why patent litigation...more
The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...more
In Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-1393, Paper 19, (PTAB April, 7 2020), the Board denied briefing based on a lack of jurisdiction while the Precedential Opinion Panel request was...more
AI is becoming ubiquitous across all industries. AI systems and services are embedded in everyday products and services, including Amazon's Alexa, Netflix streaming services, and Nest smart thermostats. AI systems are also...more
On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials....more
On January 19th, the PTO published an Executive Summary encapsulating stakeholder feedback received from the October 20, 2020 Request for Comments on institution of America Invents Act (AIA) proceedings. The USPTO received...more
On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference...more
The PTAB has added an online form to the USPTO website that allows the submission of an amicus request addressing a pending request for Precedential Opinion Panel (POP) review. This form will enable interested parties to...more
On Tuesday, the Supreme Court granted certiorari in the three appeals from the Federal Circuit’s Arthrex decision, consolidating those three cases for briefing and argument. The questions to be presented are as follows...more
The Patent Trial and Appeal Board (PTAB) has added an online form to the USPTO website that allows any member of the public to nominate any PTAB decision for precedential or informative designation...more
Holding its first mock oral arguments, the PTAB provided LEAP eligible participants with a unique opportunity to argue in front of PTAB judges. On August 7, 2020, mock oral PTAB hearings were held virtually with 40 LEAP...more
8/21/2020
/ Bar Associations ,
Inter Partes Review (IPR) Proceeding ,
LEAP ,
Litigation Strategies ,
Mock Trials ,
Oral Argument ,
Patent Litigation ,
Patents ,
Trial Practice Guidance ,
Trial Preparation ,
USPTO ,
Young Lawyers
Less experienced patent practitioners may be granted additional oral argument time in front of the Patent Trial and Appeals Board (PTAB) with the Legal Experience and Advancement Program (LEAP). LEAP helps foster development...more
On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for material...more
The Situation: Artificial intelligence ("AI") is being used to develop new inventions without human aid. As AI capabilities increase, patent offices around the globe are being confronted with difficult questions about whether...more
As fewer cases go to trial nowadays, judges have long been mindful of providing young lawyers with “stand-up” opportunities. For example, Judge William Alsup of the Northern District of California, in his Standing Order,...more
As Jones Day's PTAB Litigation Blog marks its 500th posting, Dave Cochran and Matt Johnson discuss current patent litigation developments, near-term trends, and how the PTAB is handling cases during the COVID-19 lock down....more
The emergence of artificial intelligence-related technology as a means of innovation has led to uncertainties for companies across industries, primarily because U.S. patent law has historically held that intellectual property...more
4/20/2020
/ Artificial Intelligence ,
Computer-Related Inventions ,
Copyright ,
Innovation ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventors ,
Patents ,
Popular ,
Trade Secrets ,
Trademarks ,
USPTO
On March 30, 2020, the Federal Circuit relied on Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) to vacate and remand several related PTAB decisions, including in proceedings where the patent owner did...more
The Court of Appeals for the Federal Circuit (CAFC) has denied the United States Patent and Trademark Office’s (USPTO) unopposed motion to stay its mandate issued in Arthrex. The USPTO filed its motion seeking a 90 day stay...more
On March 31, 2020, the Patent Office issued a Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) passed by Congress last week. Under the due date...more
In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims. See Rimfrost AS v. Aker Biomarine Antarctic...more
On January 31, 2020, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (“PTAB”) final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits and questioned the...more
2/15/2020
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
USPTO ,
Vacated
January 17 Update: On January 17, each of the parties filed responses to the rehearing petitions -
As we have previously discussed on this blog and elsewhere, the Federal Circuit’s decision in Arthrex v. Smith & Nephew...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
The Federal Circuit and the patent world continues to grapple with the court’s decision in Arthrex v. Smith & Nephew. Since our last updates, the parties in Arthrex and other cases have continued the push for en banc...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
USPTO ,
Vacated