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 US Court of Appeals for the Federal Circuit upheld a Patent Trial and Appeal Board (PTAB) finding of obviousness over a patent owner’s challenge to the “combination” of prior art, explaining that no motivation to combine...more
In addressing whether a claim construction adopted by the Patent Trial and Appeal Board (PTAB) “changed theories midstream,” the US Court of Appeals for the Federal Circuit affirmed the PTAB’s construction—and its...more
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
The US Court of Appeals for the Federal Circuit concluded that, post-SAS, it possessed jurisdiction to hear an appeal from an inter partes review (IPR) even where the Patent Trial and Appeal Board (PTAB) erred in limiting its...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
In reviewing a decision from the Patent Trial and Appeal Board (PTAB) deciding three interferences involving competing claims directed to testing methods for fetal aneuploidies, the US Court of Appeals for the Federal Circuit...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
In an opinion addressing the standard for claim construction of a patent that expires during reexamination, the US Court of Appeals for the Federal Circuit upheld the Patent Trial and Appeal Board’s (PTAB’s or Board’s)...more
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
9/23/2016
/ Arbitration Agreements ,
Arbitrators ,
Claim Construction ,
CLS Bank v Alice Corp ,
Internal Investigations ,
International Arbitration ,
Korea ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
USPTO
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
The U. S. Supreme Court granted certiorari to review a panel decision of the U.S. Court of Appeals for the Federal Circuit’s decision that the U.S. Patent and Trademark’s Patent Trial and Appeal Board (PTAB or Board) was...more
2/15/2016
/ Attorney's Fees ,
Broadest Reasonable Interpretation Standard ,
Certiorari ,
Claim Construction ,
Copyright Infringement ,
Cuozzo Speed Technologies v Lee ,
First Sale Doctrine ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Kirtsaeng v. John Wiley & Sons ,
Patent Litigation ,
Patent Trial and Appeal Board ,
SCOTUS
The Patent Trial and Appeal Board (PTAB or Board) denied institution of inter partes review (IPR) after determining that the challenged claims were indefinite and that therefore the Board could not apply the prior art to...more