In a precedential decision issued on August 13, 2024, the U.S. Court of Appeals for the Federal Circuit held that a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued,...more
This issue of The PTAB Review begins by providing an analysis of how institution decisions consider declaration testimony submitted by a patent owner. Next, it summarizes proposed rulemaking from the United States Patent and...more
Last week, the U.S. Supreme Court decided two important administrative law cases that are expected to increase judicial authority over agency adjudications and rulemaking. In Securities & Exchange Commission v....more
On May 10, 2024, the United States Patent and Trademark Office (USPTO) issued a notice of proposed rulemaking to add a new requirement for terminal disclaimers filed to obviate nonstatutory double patenting rejections to the...more
This issue of The PTAB Review begins by summarizing a recent Patent Trial and Appeal Board (PTAB) decision strictly applying the public availability standard for prior art references as a basis for denying institution. Next,...more
Wilson Sonsini Goodrich & Rosati is pleased to present our 2023 PTAB Year in Review.
We begin with a review of 2023 petition filings and outcomes at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and...more
This issue features articles on the firm’s Business Advisory Practice supporting Nervosave Therapeutics’ U.S. expansion; the USPTO’s forthcoming guidance on AI innovation protection; option pool sizes for life sciences...more
This issue begins with a summary of several Patent Trial and Appeal Board (PTAB) policy questions the U.S. Patent and Trademark Office (USPTO) has raised in an advance notice of proposed rulemaking. Next, we examine two...more
This issue of The PTAB Review begins with a brief update about the U.S. Patent & Trademark Office (USPTO) Guidelines for when institution of an America Invents Act (AIA) trial (e.g., inter partes review or post-grant review)...more
This issue of The PTAB Review begins with a brief summary of changes to America Invents Act (AIA) trials recently proposed in Congress. It then explores a recent Federal Circuit decision rejecting arguments that the Patent...more
On July 9, 2021, the United States Patent and Trademark Office (USPTO) published a notice in the Federal Register on behalf of Senators Tillis, Hirono, Cotton, and Coons seeking public input for a patent eligibility...more
This issue of The PTAB Review begins with a brief summary of the U.S. Supreme Court’s most recent pronouncement about America Invents Act (AIA) reviews. It then provides an update on the Patent Trial and Appeal Board’s...more
7/2/2021
/ Administrative Patent Judges ,
Apple ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Corporate Counsel ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Qualcomm ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
Earlier today, the U.S. Supreme Court decided the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were not constitutionally appointed, and that the patent owner, Arthrex, Inc., is entitled to a...more
6/23/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
In this edition, we examine the effect of Fintiv on PTAB proceedings dealing with patents asserted in so-called “rocket docket” courts. Next, we provide a brief summary of several recent Federal Circuit cases. We conclude by...more
On September 10, 2020, the Patent Trial and Appeal Board (PTAB) decided key motions in Interference No. 106,115, University of California v. Broad Institute. The interference involves 10 patent applications of the University...more
The Patent Trial and Appeal Board (PTAB) and the United States Court of Appeals for the Federal Circuit (CAFC) have made adjustments in their practices to accommodate the new realities of COVID-19 and social distancing, but...more
On March 23, 2020, a fractured Federal Circuit issued a precedential order denying rehearing en banc in Arthrex, Inc. v. Smith & Nephew, Inc., No. 2018-2140. On October 31, 2019, a three-judge Federal Circuit panel before...more
Orange Book-Listed Patents Prove to Be Popular Targets for AIA Challenges -
On March 13, 2018, Chief Administrative Patent Judge Ruschke of the Patent Trial and Appeal Board (PTAB) released findings of the Patent Office’s...more
Today, the U.S. Supreme Court issued two decisions that will keep the Patent Trial and Appeal Board (PTAB) busier than ever. In Oil States Energy Services, LLC v. Greene's Energy Group, LLC,1 the Court affirmed that inter...more
4/25/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
Judicial review of post-grant patent proceedings at the Patent Trial and Appeal Board (PTAB) is limited, but a federal court of appeals has somewhat loosened the restriction. On January 8, 2018, in Wi-Fi One, LLC v. Broadcom...more
1/11/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
Broadcom ,
Cuozzo Speed Technologies v Lee ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Time-Barred Claims ,
USPTO
On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision in Aqua Products, Inc., v. Matal, finding that the petitioner has the burden of proving the unpatentability of claims—even...more
Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more
6/10/2016
/ America Invents Act ,
Discovery ,
Estoppel ,
First-to-File ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Precedential Opinion ,
Real Party in Interest ,
Rules of Practice ,
USPTO
On April 1, 2016, the U.S. Patent and Trademark Office (USPTO) issued another round of amendments to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the Leahy-Smith America Invents Act (AIA)....more
On December 2, 2015, the U.S. Court of Appeals for the Federal Circuit issued an order denying a petition for rehearing en banc in the closely watched Sequenom case. Earlier this year, on appeal from the U.S. District Court...more
On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) announced another set of proposed changes to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the America Invents Act (AIA)....more
8/26/2015
/ Amended Complaints ,
America Invents Act ,
Claim Construction ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Proposed Amendments ,
Rule 11 ,
USPTO