The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard...more
5/14/2018
/ Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
NPRM ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Rules of Appellate Procedure ,
Standard of Review ,
USPTO
On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more
The PTAB issued an order stating that it would grant Patent Owner’s motion to amend claims upon Patent Owner accepting further claim amendments suggested by the judges in Taiwan Semiconductor Manufacturing Co. Ltd. v. Godo...more
Federal Circuit Summaries -
Before Dyk, Moore, and Stoll. Appeal from the Trademark Trial and Appeal Board.
Summary: The bar in § 2(a) of the Lanham Act against registering immoral or scandalous trademarks is an...more
12/21/2017
/ Appeals ,
Commercial Speech ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Lanham Act ,
Public Forum ,
Scandalous/Immoral Marks ,
Standard of Review ,
Substantial Government Interest ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks
The USPTO announced that the official fees for IPR and PGR will increase significantly starting on January 16, 2018. See 82 Fed. Reg. 52780, 52807 (Nov. 14, 2017). ...more
On October 24, 2017, the PTAB designated as “informative” the following three decisions that discretionarily denied institution of IPR petitions under 35 U.S.C. § 325(d). Section 325(d) provides that “the Director may take...more
The PTAB extended the deadline for issuing its IPR final written decision on a motion to amend by up to six months to provide additional time to consider the impact of the Federal Circuit’s recent en banc Aqua Products...more
The Federal Circuit issued an en banc decision instructing the PTAB to assess patentability of amended claims in IPR proceedings without placing the burden of persuasion on the patent owner. Aqua Products, Inc. v. Matal, No....more
10/9/2017
/ Appeals ,
Burden of Persuasion ,
Claim Amendments ,
Inter Partes Review (IPR) Proceeding ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Remand ,
Reversal ,
USPTO
The Federal Circuit determined that Article III standing was not necessary for an appellee to participate in a judicial appeal of an IPR final written decision because the appellant had Article III standing in Personal Audio,...more
8/18/2017
/ Administrative Proceedings ,
Appeals ,
Appellate Rules ,
Article III ,
Electronic Frontier Foundation ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Standing
The PTAB recently designated as precedential its 2013 decision that assignor estoppel is not a defense for patent owners in IPR proceedings in Athena Automation Ltd. v. Husky Injection Molding Systems Ltd., IPR2013-00290,...more
The PTAB denied Apple’s motion to withdraw both its IPR petition and concurrent motion for joinder to prevent Apple from circumventing potential estoppel ramifications in Apple Inc. v. Papst Licensing GmbH & Co. KG,...more
6/5/2017
/ Apple ,
Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Litigation Strategies ,
Motion to Dismiss ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Voluntary Withdrawal
The Supreme Court granted a petition for writ of certiorari to address whether the PTAB is required to issue a final written decision with respect to the patentability of every claim challenged by a petitioner in SAS...more
5/31/2017
/ Appeals ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition for Writ of Certiorari ,
SAS Institute Inc. v Lee ,
SCOTUS ,
USPTO
The Federal Circuit held that statements made by a patent owner in an IPR, whether before or after institution, can be considered during claim construction in district court litigation and relied upon to support a finding of...more
The PTAB granted joinder of a time-barred petitioner to an IPR trial after the patent owner settled its dispute with the original petitioner in AT&T Services, Inc. v. Convergent Media Solutions, LLC, IPR2017-01237, Paper 10...more
The USPTO Director granted a request to extend a missed deadline for an appeal of an IPR decision to the Federal Circuit due to the patent owner’s excusable neglect in Mitsubishi Cable Industr., Ltd. v. Goto Denshi Co., Ltd.,...more
5/10/2017
/ Excusable Neglect ,
Filing Deadlines ,
Inter Partes Review (IPR) Proceeding ,
International Litigation ,
Japan ,
Jurisdiction ,
Notice of Appeal ,
Patent Litigation ,
Patents ,
Time Extensions ,
USPTO
The PTAB expunged non-compliant motions for observations on cross-examination in Xilinx, Inc. v. Papst Licensing GMBH & Co., KG, IPR2016-00104, Paper 22 & IPR2016-00105, Paper 22 (P.T.A.B. May 3, 2017). ...more
Old Republic’s IPR petition was effectively unopposed due to a defect in the chain of assignment, which led the PTAB to hold all claims unpatentable without considering arguments or evidence submitted in favor of...more
The PTAB granted-in-part motions to amend in three related proceedings: Activision Blizzard, Inc. v. Acceleration Bay, LLC, IPR2015-01953, Paper 107 (P.T.A.B. sealed on March 23, 2017, made public on April 19, 2017);...more
The PTAB weighed five factors in its discretionary denial of a second IPR petition filed by the same petitioner in Xactware Solutions, Inc. v. Eagle View Tech., Inc., IPR2017-00034, Paper 9 (P.T.A.B. April 13, 2017)....more
The PTAB issued a Final Written Decision in Amerigen Pharm. Ltd. v. Shire LLC, IPR2015-02009, Paper 38 (P.T.A.B. March 31, 2017) granting a rare motion to amend. The motion canceled all instituted claims and amended a...more
The Patent Trial and Appeal Board (“PTAB”) invoked its discretion under 35 U.S.C. § 325(d) to deny Toyota’s IPR petition against Adaptive Headlamp’s U.S. Patent No. 7,241,034 (“the ’034 patent”) in Toyota Motor Co. v....more
The PTAB issued a Final Written Decision upholding Pozen’s ulcer reducing Vimovo® claims based on unexpected results in Coalition For Affordable Drugs VII LLC v. Pozen Inc., IPR2015-01718, Paper 40 (P.T.A.B., Feb. 21, 2017)....more
The PTAB denied institution of an IPR based on patent owner’s challenge to the prior art status of a PCT publication that was asserted by the petitioner as pre-AIA 35 U.S.C. § 102(e) prior art in Forty Seven, Inc. v....more
The PTAB recently granted a request for rehearing and modified the final written decision in WesternGeco LLC v. PGS Geophysical AS, IPR2015-00313, Paper 43 (P.T.A.B., Feb. 3, 2017). This is an extremely rare event....more
On April 1, 2016, the U.S. Patent and Trademark Office (USPTO) issued amended final rules that govern trials under the America Invents Act (AIA), including inter partes review, post-grant review, covered business method...more
4/4/2016
/ America Invents Act ,
Claim Construction ,
Corporate Counsel ,
Covered Business Method Patents ,
Declaration ,
Derivation Proceeding ,
Final Rules ,
Inter Partes Review (IPR) Proceeding ,
Patent Owner Preliminary Response ,
Patents ,
Post-Grant Review ,
USTPO ,
Young Lawyers