In 2020, the Patent Trial and Appeal Board (“PTAB”) announced six factors to be used in determining whether to institute an inter partes review (“IPR”) when a fast-moving parallel district court litigation could determine the...more
A recent decision by a Patent Trial and Appeal Board (PTAB) panel in Canadian Solar Inc., et al v. The Solaria Corporation may have opened the door for aggrieved parties to seek rehearing for any reason, rather than the...more
When faced with an instituted IPR, the Patent Owner should include all arguments it wishes to preserve for appeal in its Patent Owner Response (“POR”), including arguments that the Patent Owner believes are unlikely to...more
On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in United States v. Arthrex, et al., striking a portion of the America Invents Act (AIA) as unconstitutional—but providing an...more
6/25/2021
/ Administrative Patent Judges ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Principle Officers ,
SCOTUS ,
United States v Arthrex Inc
As we have previously discussed, expert testimony is a critical aspect of the Patent Owner’s case-in-chief of an inter partes review (“IPR”) proceeding. In addition to retaining the right expert witness and maximizing that...more
As a Patent Owner in an instituted Inter Partes Reviews (“IPR”), one of the first and most critical tasks before you is deposing the Petitioner’s witnesses, including its experts. But approaching an IPR deposition like a...more
The Federal Circuit’s recent Uniloc 2017 v. Facebook Inc. decision is a mixed bag of good and bad news for both patent owners and inter partes review petitioners. On the plus side for patent owners (but not for petitioners),...more
Under U.S. patent law, “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). And petitioners only need to demonstrate a reasonable likelihood of prevailing with respect to one...more
The United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) was once famously referred to by the former chief judge of the Federal Circuit, the honorable Randall Rader, as a patent death squad....more
To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. But in a recent final written decision...more
In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant...more
6/29/2017
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Notice Requirements ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Reversal
The Federal Circuit has further clarified the scope of the covered business method (CBM) review program under the America Invents Act (AIA), explaining in Secure Axcess, LLC. v. PNC Bank National Association that in order for...more
When the Patent Trial and Appeal Board issues a final written decision finding against an IPR Petitioner, can that Petitioner necessarily appeal that adverse decision? In a case of first impression, the Federal Circuit...more
The Federal Circuit has again addressed which types of patents are eligible for Covered Business Method (“CBM”) review before the Patent Trial & Appeals Board. Approximately one week after issuing the recent Unwired Planet v....more
The America Invents Act (“AIA”) mandates that a Covered Business Method Review is available only for challenging the validity of covered business method patents. On November 21, 2016, the Federal Circuit ruled in Unwired...more
The Federal Circuit reaffirmed last week that the Patent Trial and Appeal Board’s (PTAB’s) decision to discontinue inter partes review (IPR) proceedings is not reviewable on appeal. In Medtronic, Inc. v. Robert Bosch...more
As a patent owner involved in patent litigation, you must consider numerous factors when negotiating a settlement agreement. An important contemplation is timing, because finalizing a settlement agreement at the wrong...more
Following the filing of a petition with the Patent Trial and Appeal Board (PTAB) seeking to initiate either an Inter Partes Review (IPR) or Covered Business Method (CBM) Review, the patent owner may file a preliminary...more
The Patent Trial and Appeal Board recently designated as precedential its decision in Westlake Services, LLC v. Credit Acceptance Corp., CBM2014-00176, Paper 28 (PTAB May 14, 2015) addressing the scope of estoppel under 35...more
Last week, the PTAB designated two recent post-grant proceeding decisions as “precedential,” marking only the second and third time it has designated one of its opinions as binding on all PTAB judges. One of those...more
Last week, the Federal Circuit explained that the Patent Trial and Appeal Board did not err when it allowed a petitioner to revise its Inter Partes Review Reply brief after first cautioning the petitioner that the PTAB may...more
The Federal Circuit has again held that it lacks jurisdiction to review certain decisions of the U.S. Patent Trial & Appeal Board in Inter Partes Reviews, continuing the Court’s apparent “hands off” approach to reviewing PTAB...more
10/9/2015
/ Apple ,
Corporate Counsel ,
Covered Business Method Proceedings ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Real Party in Interest ,
Versata ,
Young Lawyers