News & Analysis as of

Administrative Procedure Act Patent Ownership Patents

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Recent Updates at the U.S. Patent Trial and Appeal Board

Recent changes at the U.S. Patent Trial and Appeal Board (PTAB) have brought uncertainty to inter partes review and post-grant review practitioners before the U.S. Patent and Trademark Office (PTO). These procedural and...more

Knobbe Martens

IPR Standing Arguments Not Presented to the Board Are Forfeited

Knobbe Martens on

APPLE INC. v. GESTURE TECHNOLOGY PARTNERS, LLC - Before Moore, Prost, and Stoll. Appeal from the Patent Trial And Appeal Board. A patent owner forfeits its argument that an IPR petitioner lacks standing under 35 U.S.C....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 PTAB Year in Review: Analysis & Trends

The Patent Trial and Appeal Board (PTAB) continues to play a pivotal role in shaping the intellectual property landscape. In 2024, several developments affecting PTAB practice emerged, from new rulemaking at the USPTO to key...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Reexamination Petition Practice Is a Critical Tool for Patent Owner Success

Takeaways: 1. Nontraditional and unique issue petitions are common for patent owners to properly prosecute reexamination proceedings. 2. Well-drafted petitions influence outcomes and preserve PTAB, District Court, and/or...more

Sheppard Mullin Richter & Hampton LLP

Federal Circuit Rules on Inventor-as-Lexicographer Definitions and the Proper Scope of Reply and Sur-Reply Briefing Following...

ParkerVision, Inc., v. Katherin K. Vidal, Under Secretary of Commerce for IP and USPTO Director No. 2022-1548, (Fed. Cir. December 15, 2023) primarily involved three topics: (1) the type of language in a patent specification...more

Jones Day

Error In Declaration Insufficient To Sink IPR

Jones Day on

In a precedential opinion, the Court of Appeals for the Federal Circuit vacated a final written decision in which the Patent Trial and Appeal Board (“PTAB”) found that Apple had failed to meet its burden of showing...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - November 2022 #3

American National Manufacturing Inc. v. Sleep Number Corporation, Appeal Nos. 2021-1321, -1323, -1379, -1382 (Fed. Cir. Nov. 14, 2022) - In an appeal from inter partes review proceedings before the Patent Trial and Appeal...more

McDermott Will & Emery

Challenge to PTAB’s Finding of Non-Obviousness Fails to Pay Out

McDermott Will & Emery on

Addressing whether the Patent Trial and Appeal Board (PTAB) ran afoul of the Administrative Procedure Act (APA) in finding that a dependent claim was valid despite the patent owner’s lack of validity arguments beyond those...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench: Latest Federal Circuit Court Cases

PATENT CASE OF THE WEEK - WesternGeco LLC v. Ion Geophysical Corp., Appeal Nos. 2016-2099, -2100, -2101, -2332, -2333, -2334 (Fed. Cir. May 7, 2018) - In an appeal from an inter partes review, the Federal Circuit...more

Knobbe Martens

The PTAB Authorizes Additional Motion To Amend Briefing in View of Aqua Products

Knobbe Martens on

The Board authorized petitioner Kingston to file a Response to the patent owner’s Reply to petitioner’s Opposition to Motion to Amend, based on the Federal Circuit’s en banc holding that the burden to establish...more

Morgan Lewis

Federal Circuit Reverses PTAB Patent Invalidation Based on Lack of APA Due Process

Morgan Lewis on

Inter partes review (IPR) petitioners must ensure adequate notice of arguments against validity; patent owners must preserve rights to defend against all arguments raised by petitioners—even when they arise late in the...more

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