News & Analysis as of

America Invents Act

The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant... more +
The Leahy-Smith America Invents Act is a United States federal statute enacted in 2011 aimed at simplifying the U.S. patent system and allowing inventions to be brough to market sooner. The AIA makes significant changes to the patent system, including changing from a first-to-invent scheme to a first-to-file scheme, eliminating interference proceedings and developing post-grant opposition.  less -

Supreme Court Upholds Constitutionality Of IPR Proceedings, But Strikes Down Partial PTAB Final Written Decisions

by Brooks Kushman P.C. on

The U. S. Supreme Court issued rulings today in two cases involving inter partes review proceedings (“IPRs”) created by the Leahy-Smith America Invents Act (“AIA”). In the first case, Oil States Energy Services, LLC v....more

Supreme Court Decides Oil States Energy Services, LLC v. Greene's Energy Group, LLC

by Faegre Baker Daniels on

On April 24, 2018, the Supreme Court decided Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712, holding that the “ inter partes” review process established by the Leahy-Smith America Invents Act of...more

Supreme Court Decides SAS Institute Inc. v. Iancu

by Faegre Baker Daniels on

On April 24, 2018, the Supreme Court of the United States decided SAS Institute Inc. v. Iancu, No. 16-969, holding that when the United States Patent and Trademark Office institutes an inter partes review, it must decide the...more

Supreme Court Rules PTAB Proceedings Constitutional

by Baker Donelson on

The U.S. Supreme Court today issued dual decisions with substantial impact on the future of Inter Partes Review (IPR) and related proceedings for challenging the validity of patent claims before the PTAB (Patent Trial and...more

U.S. Supreme Court: Inter Partes Review Is Constitutional

by Jones Day on

This morning, the U.S. Supreme Court issued its decision in Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, No. 16-712, __ U.S. __ (2018)...more

U.S. Supreme Court: No More Partial Institution Practice In AIA Reviews

by Jones Day on

In a win for SAS Institute, represented by Jones Day attorneys Greg Castanias, John Marlott, and Dave Cochran, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, No. 16-969, __ U.S. __ (2018), this...more

SCOTUS Issues Key IPR Decisions

by Goodwin on

This morning, the United States Supreme Court issued two key decisions concerning the fundamental authority of the United States Patent and Trademark Office (USPTO) to institute inter partes review (IPR)...more

An Early Obituary for CBM Review

Looking forward about two years, you may flip through the New York Times obituaries section to find the following: On September 16, 2020, covered business method (CBM) review, age 8, passed away. Born out of a desire to...more

PTAB Designates Informative Decisions on Discretionary Denial of Institution for Prior Art Previously Presented to the Office

by Knobbe Martens on

On March 21, 2018, the PTAB designated two decisions as “informative” that denied institution for presenting prior art that had been previously presented during prosecution. Becton, Dickinson & Co. v. B. Braun Melsungen AG,...more

Have Cake, Eat Cake: Declaratory Judgment Strategy For Accused Infringers

by Jones Day on

The AIA prohibits institution of a post-grant proceeding when the petitioner previously “filed a civil action challenging the validity of a claim of the patent.” 35 U.S.C. § 315(a)(1). PGR petitions (including CBM petitions)...more

Due Process Trumps Validity Concerns in AIA Trials

In Dell Inc. v. Acceleron, LLC, the Federal Circuit held that a panel of the Patent Trial and Appeal Board (PTAB) correctly declined to consider the petitioner’s new argument on remand, even though the panel previously found...more

PTAB Institutes Its First Derivation Trial: Andersen Corp. v. GED Integrated Solutions, Inc.

Under the America Invents Act, the Patent Trial and Appeal Board has been busy handling inter partes review (IPR), covered business method review (CBM), and post-grant review (PGR) proceedings. Petitioners have filed...more

How the PTAB and Federal Circuit Have Responded to Aqua Products

The patent bar watched the en banc rehearing decision in Aqua Products Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017), with great interest. This was because the lack of availability to amend claims in an inter partes review...more

Put All Your RPIs on the Table: Petitioner Bears Burden to Prove List of Real-Parties-in-Interest Is Correct

by McDermott Will & Emery on

The Patent Trial and Appeal Board (PTAB) signaled the importance of responding to discovery related to a petitioner’s real-parties-in-interest and privies (RPIs), reiterating that while the burden of production related to...more

Tribal Sovereign Immunity Does Not Apply to IPR

by McDermott Will & Emery on

In a matter of first impression, the Patent and Trial Appeal Board (PTAB) denied a Native American tribe’s motion to terminate a finding that tribal sovereign immunity does not apply to inter partes review (IPR) proceedings....more

Recent PTAB Studies: Expanded Panels and Orange Book-Listed Patents

by Foley & Lardner LLP on

In connection with a recent “Chat with the Chief” webinar, the Patent Trials and Appeal Board (“PTAB”) released two studies – a study of expanded panels and a study of proceedings challenging orange book-listed patents....more

Knee Brace Patent Application Gets a Leg Up

by McDermott Will & Emery on

Finding that the Patent Trial and Appeal Board (PTAB) erred in rejecting patent claims after improperly construing an apparatus claim element by ignoring what it deemed to be a recited method step, the US Court of Appeals for...more

First AIA Derivation Trial Instituted By PTAB

by Pepper Hamilton LLP on

On March 21, 2018, the Patent Trial and Appeal Board (“PTAB”) instituted the first AIA derivation proceeding to determine whether patent claims to a window frame component should be canceled because they were derived from...more

Examiner’s Reason for Allowance May Be Sufficient to Show Prosecution Disclaimer

by McDermott Will & Emery on

While affirming a Patent Trial and Appeal Board (PTAB) decision to invalidate a patent as obvious, the US Court of Appeals for the Federal Circuit found that the PTAB incorrectly concluded that an examiner’s statements in a...more

Arbitrate Without Losing The Inter Partes Review Option

New York Law Journal Intellectual Property Special Report March 2018 - I recently overheard one of my colleagues make the following observation: “Well, with AIA being so challenger friendly, quick, and relatively...more

IPR and CBM Statistics for Final Written Decisions Issued in February 2018

by Finnegan – AIA Blog on

The Patent Trial and Appeal Board issued 54 IPR and CBM Final Written Decisions in February, including decisions following remands from the Federal Circuit, cancelling 420 (63.44%) instituted claims while declining to cancel...more

Case File: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC

The Supreme Court’s upcoming decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (No. 16-712) has the potential to dramatically change Patent Trial and Appeal Board (PTAB) practice and the patent system...more

PTAB Institutes Its First Derivation Proceeding

by Finnegan – AIA Blog on

On March 21, 2018, the PTAB instituted its first derivation proceeding under 37 C.F.R. § 42.400 et seq., having denied many petitions over the years. Andersen Corp. v. GED Integrated Solutions, Inc., DER2017-00007 (Paper...more

Patent Proposals in Congress

Since the creation of patent reviews at the Patent Office Trial and Appeal Board (PTAB) by the America Invents Act of 2011, a very high percentage of reviewed patents have been declared invalid. Now, a bill has been...more

Orange Book-Listed Patents Challenged in AIA Trial Proceedings

The USPTO recently issued a study concerning AIA trial proceedings challenging Orange Book-Listed patents. The study was presented by the PTAB in a webinar entitled “New PTAB Studies in AIA Proceedings: Expanded Panels and...more

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