Latest Posts › USPTO

Share:

Timeline of Arthrex Developments

The Federal Circuit’s decision in Arthrex v. Smith & Nephew excited and disrupted the patent world... Inter partes review (IPR) reshaped patent law and patent litigation this decade after the America Invents Act took effect....more

PTAB Webinar Addresses Motion To Amend Practice

On December 4, 2019, the PTAB hosted the last installment for 2019 in its “Boardside Chat” webinar series. The program, presented by Deputy Chief Judge Jacqueline Bonilla and Lead Administrative Patent Judge Jessica Kaiser,...more

Notes from House Judiciary Subcommittee Hearing on Arthrex

On Tuesday, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet conducted a hearing to discuss recent court decisions, namely the Federal Circuit’s decision in Arthrex. Previously...more

Privacy Management Patent Invalidated as Abstract in Post Grant Review

On October 10, 2019, the Patent Trial and Appeal Board (“PTAB”) issued a Final Written Decision in favor of Avepoint, Inc. (“Avepoint”) and against Onetrust, LLC (“Onetrust”) in an America Invents Act post grant review...more

PTAB Applies Statutory Grace Period to Filing of Continuing Applications

The PTAB has previously applied to IPR filings the statutory grace period under 35 U.S.C. § 21(b) for USPTO papers and fees due on a weekend or holiday. See Samsung Elecs. Co. v. Immersion Corp., Case IPR2018-01468, slip op....more

PTAB Determines Parallel ITC Record Did Not Create Tactical Advantage

In a recent decision, the PTAB decided to institute inter partes review (“IPR”) of U.S. Patent No. 7,937,394 B2 despite Patent Owner’s claims that Petitioner engaged in gamesmanship and asserted references and combinations...more

Trial Practice Guide Updates – Multiple Petitions, Claim Construction, and PO Testimonial Evidence

On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board. The...more

NEWS: USPTO Issues Updates To PTAB Trial Practice Guide

The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in August 2012, concurrent with the...more

PTAB FY 2019 Statistics Through April

Institution rates have ticked up while petition filing rates are down slightly so far compared to fiscal year 2018. The running rate for institutions through the first six months of FY 2019 is at 64% compared to 60% in the...more

PTO Issues Guidance On Reissue And Reexam Of AIA-Challenged Claims

Further to the PTAB’s efforts to improve the ability of patent owners to amend claims in an AIA trial via the Motion to Amend Pilot program, the USPTO recently issued guidance on other avenues for amending claims of patents...more

PTAB’s Motion to Amend Pilot Program: Actual v. Proposed

To facilitate claim amendments in inter partes, post-grant and covered business method patent reviews (collectively AIA trials), the USPTO on October 29, 2018, published a request for comment (“RFC”) on a proposed procedure...more

PTAB November Statistics

The PTAB’s November statistics confirmed the expected jump in PTAB filings in November, with many petitioners seeking to file petitions before the changeover from the BRI to Phillips claim construction standard. 212 petitions...more

SCOTUS Rejects Petition To Review Section 325(d)

On November 19, 2018, the Supreme Court of the United States (SCOTUS) rejected a petition to review the PTAB’s refusal to deny IPR institution under § 325(d), in a case where the challenged patent had survived several...more

USPTO’s Revised SOP Sheds Light on Selection of PTAB Panels

The USPTO has revised its standard operating procedure (SOP) governing the assignment of judges to panels in Patent Trial and Appeal Board (PTAB) cases. The SOP, available here, provides guidance to Board administrative...more

PTAB Claim Construction Final Rule Announced

The USPTO has published a final rule changing the claim construction standard applied during inter partes review (IPR), post-grant review (PGR), and the transitional program for covered business method patents (CBM)...more

Statutory Disclaimer Fails to Support Stay

District courts have discretionary authority to grant a motion to stay. Courts consider three factors in deciding how to exercise that discretion, the first being whether a stay will simplify the issues for trial. In...more

PTAB Publishes Updated AIA Trial Practice Guide

The USPTO’s Patent Trial and Appeal Board (PTAB) has published an update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board. The USPTO published the original TPG in...more

PTAB Designates Five Decisions as Informative

On July 10, 2018, the PTAB announced the designation the following five decisions as informative: Colas Sols. Inc. v. Blacklidge Emulsions, Inc., Case IPR2018-00242, Paper 9 (Feb. 27, 2018) – holding that 35 U.S.C. §...more

Major Patent Offices Meet to Discuss Adoption of AI Tools

Last week, the United States Patent and Trademark Office (USPTO) hosted the annual meeting of the heads of the world’s five largest intellectual property offices, commonly referred to as the IP5 (see a related press release)....more

File It: Motion for Remand in View of SAS Institute

We have previously discussed the ramifications of the Supreme Court’s decision in SAS Institute, Inc. v. Iancu, which held that the PTAB cannot institute an IPR on only some of the petitioned claims. One open question was...more

Proposed Rule: No More BRI in PTAB Trials

Today, the USPTO issued a press release announcing a Notice of Proposed Rulemaking for Claim Construction Standards used in PTAB Proceedings. The rule proposed by the Office would change the prior policy of using the Broadest...more

USPTO Holds Webinar to Discuss Supreme Court’s SAS Decision

On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that a decision to institute inter partes review under 35 U.S.C. § 314 may not institute on less all claims challenged in...more

Supreme Court Upholds Constitutionality of IPRs

Rumors of the PTAB’s demise were greatly exaggerated, it turns out. In a 7-2 decision, the Supreme Court held on Tuesday that Inter Partes Reviews (IPRs) violate neither Article III nor the Seventh Amendment of the...more

Failure To Maintain Correspondence Address Could Be Detrimental To Your Health

The PTAB rules state that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent.” 37 C.F.R. § 42.105(a). Prompt service is important in IPRs...more

PTAB Designates Two 35 U.S.C. §315(b) Cases Informative

On January 10, 2018, the PTAB designated two decisions weighing on 35 U.S.C. § 315(b) as informative: Luv N’ Care, Ltd. v. McGinley, IPR2017-01216, Paper 13 (P.T.A.B. Sept. 18, 2017) (AIA § 315(b), insufficient funds at...more

103 Results
 / 
View per page
Page: of 5

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
- hide
- hide