In the wake of its six-week-old decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court of the United States has now granted certiorari in an appeal of another case arising from a Federal Circuit appeal...more
6/24/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
Addressing the scope of review of the PTAB’s application of the one-year time bar of 35 U.S.C. § 315(b) in deciding whether to institute an IPR proceeding, the US Supreme Court held that the PTAB’s application of the time bar...more
4/23/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
The Supreme Court of the United States, brushing aside the position taken by the US Patent and Trademark Office as to the suitability of this case as a vehicle for review, agreed to consider whether a petition for an America...more
7/9/2019
/ § 315(b) ,
America Invents Act ,
Appeals ,
Certiorari ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patents ,
Statute of Limitations ,
Time-Barred Claims ,
Voluntary Dismissals
The US Supreme Court has now held that a federal agency is not a “person” under the America Invents Act (AIA). Therefore, a federal agency cannot be a petitioner seeking review under the various AIA patent review procedures....more
6/13/2019
/ Administrative Agencies ,
America Invents Act ,
Covered Business Method Proceedings ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
SCOTUS
Addressing whether the review of a single claim on a single challenged ground in a petition may be sufficient to institute inter partes review (IPR) for all challenged claims on all challenged grounds, the Patent Trial and...more
The US Court of Appeals for the Federal Circuit granted a motion for remand, finding that a party did not waive SAS-based relief when it requested reconsideration of non-instituted claims shortly after the issuance of the...more
In light of the Supreme Court of the United States decision in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), the US Court of Appeals for the Federal Circuit remanded an appeal from the Patent Trial and Appeal Board...more
8/29/2018
/ 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 ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
The US Court of Appeals for the Federal Circuit upheld an inter partes review (IPR) determination that challenged claims were not obvious over two references asserted in requestor’s IPR petition without consideration of other...more
Addressing whether either of two previously filed district court actions precluded institution of an inter partes review (IPR) proceeding under the one-year time bar of 35 USC § 315(b), the Patent Trial and Appeal Board...more
Addressing the issues of priority and incorporation by reference, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s) prior art rejection of a patent based on the priority date...more
In a 5–4 decision, the Supreme Court of the United States reversed a decision by the US Court of Appeals for the Federal Circuit, holding that once the Patent Trial and Appeal Board (PTAB) institutes an inter partes review...more
In a 5-4 decision, the US Supreme Court reversed a decision by the US Court of Appeals for the Federal Circuit, holding that once the Patent Trial & Appeal Board of US Patent & Trademark Office (PTAB or Board) institutes an...more
The US Court of Appeals for the Federal Circuit agreed with the Patent Trial and Appeal Board (PTAB) that because a patent owner disclaimed all claims challenged in an inter partes review (IPR) prior to institution, the IPR...more
The Supreme Court of the United States granted certiorari to decide whether only Art. III federal courts, not executive branch tribunals such as the Patent Trial and Appeal Board (PTAB), can decide whether a patent is...more
Echoing Judge Newman’s dissent in the US Court of Appeals for the Federal Circuit’s decision in SAS Institute, Inc. v. ComplementSoft, LLC, Case Nos. 15-1346; -1347 (Fed. Cir., Nov. 7, 2016) (per curiam) (Newman, J,...more
In a September 2015 panel decision, Achates Reference Publishing v. Apple, the US Court of Appeals for the Federal Circuit ruled that under 35 USC 314(b), decisions of the Patent Trial and Appeal Board (PTAB) finding that an...more
The full US Court of Appeals for the Federal Circuit has issued an order granting en banc review of the Patent Trial and Appeal Board’s (PTAB’s or Board’s) rules governing amendments filed in the course of America Invents Act...more
9/2/2016
/ America Invents Act ,
Appeals ,
Burden of Persuasion ,
Burden of Production ,
Claim Amendments ,
En Banc Review ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Sua Sponte ,
USPTO
Controlling Costs in International Arbitration -
Arbitration is an efficient means for resolving business disputes because it offers more flexibility than court proceedings and enables the parties to choose arbitrators...more
8/22/2016
/ America Invents Act ,
Arbitration ,
Computer-Related Inventions ,
Covered Business Method Patents ,
Internal Investigations ,
International Arbitration ,
Korea ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
USPTO ,
White Collar Crimes
In Depth -
The Supreme Court of the United States (Justice Breyer writing for the majority) affirmed a US Court of Appeals for the Federal Circuit decision barring judicial review of most decisions regarding institution...more
6/30/2016
/ America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Cuozzo Speed Technologies v Lee ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Standard of Review ,
USPTO
In two related decisions, the Patent Trial and Appeal Board (PTAB or Board) determined that patents directed to a personal computer interactive lottery/casino type game that allows players to purchase game tickets in the form...more
10/7/2015
/ Abstract Ideas ,
America Invents Act ,
CLS Bank v Alice Corp ,
Covered Business Method Proceedings ,
Patent Expiration ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Versata
Applying section 18(a)(1) of the America Invents Act (AIA) to an issue of first impression, a divided panel of the U.S. Court of Appeals for the Federal Circuit reversed a district court, ordering a stay of the district court...more
7/17/2014
/ America Invents Act ,
Appeals ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Highmark v. Allcare ,
Order to Stay ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Salesforce
In This Issue:
Supreme Court -
Supreme Court Finds That “First Sale” Doctrine Applies to Works
Patents -
Joint Actors as It Relates to Method Claim Infringement; Federal Circuit Ruling Clears Way...more
In This Issue:
Patents -
Supreme Court: State Court Has Jurisdiction over a Legal Malpractice Claim; Nothing Non-Obvious About Applying Pre-Existing Technology to the Internet; The Federal Circuit Is Not the...more
2/28/2013
/ Adverse Inference Instructions ,
America Invents Act ,
Assignor Estoppel ,
Attorney Malpractice ,
Commercial Bankruptcy ,
Covenant Not to Sue ,
Design Patent ,
Destruction of Evidence ,
Direct Infringement ,
First-to-File ,
Gunn v Minton ,
Infringement ,
Jurisdiction ,
Mattel ,
MGA Entertainment ,
Misappropriation ,
Obviousness ,
Patent Reform ,
Patents ,
SCOTUS ,
Trade Secrets ,
Trademarks
In This Issue:
Patents -
..Federal Circuit Rules It’s Own Standards Apply When Considering Preliminary Injunctions
..Preliminary Testing of Medical Devices in Animals Enables Their Use in...more
12/28/2012
/ America Invents Act ,
Claim Construction ,
Competition ,
Copyright ,
Infringement ,
International Trade Commission (ITC) ,
Obviousness ,
Patent Assertion Entities ,
Patent Reform ,
Patents ,
Pay-For-Delay ,
Permanent Injunctions ,
Preliminary Injunctions ,
Reissue Patents ,
Restitution ,
Trade Secrets ,
Trademarks ,
Walker Process Claims