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
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
12/17/2019
/ Administrative Patent Judges ,
America Invents Act ,
Appeals ,
Appellate Briefs ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
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
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
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
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
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
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
7/24/2019
/ Additional Discovery ,
America Invents Act ,
Claim Construction ,
Covered Business Method Patents ,
Cross Examination ,
Expert Testimony ,
Guidance Update ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Trial Practice Guidance ,
USPTO
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
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
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
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
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
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
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
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
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
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
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
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
6/22/2018
/ Artificial Intelligence ,
EPO ,
Global Dossier ,
Intellectual Property Protection ,
JPO ,
KIPO ,
Patent Examinations ,
Patents ,
Press Releases ,
SIPO ,
USPTO
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
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
5/9/2018
/ Advanced Notice of Proposed Rulemaking (ANPRM) ,
Article III ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
International Trade Commission (ITC) ,
Judicial Review ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Rules ,
Standard of Review ,
USPTO
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
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
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SCOTUS ,
Seventh Amendment ,
USPTO
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