News & Analysis as of

America Invents Act Patent Trial and Appeal Board

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 -

Federal Circuit PTAB Appeal Statistics – November 2017

by Finnegan – AIA Blog on

Through November 15, 2017, the Federal Circuit decided 275 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 205 (74.55%) cases, and reversed or vacated the PTAB on every issue in 31...more

SCOTUS Hears Oral Argument on PTAB's Practice of Instituting Review and Issuing Final Decisions on Fewer Than All Challenged...

by White & Case LLP on

On Monday, November 27, 2017, the Supreme Court of the United States heard oral argument in SAS Institute Inc. v. Matal et al. regarding whether the Patent Trial and Appeal Board (PTAB) must issue a final written decision as...more

Federal Circuit Slams PTAB Amendment Policy

by Pepper Hamilton LLP on

On October 4, 2017, the Court of Appeals for the Federal Circuit, sitting en banc, overruled an earlier panel decision and found that the Patent Trial and Appeal Board (PTAB) had been impermissibly placing the burden of...more

PTAB Underscores Reasons for Denying Institution Under 35 USC § 325(d)

by McDermott Will & Emery on

The Patent Trial and Appeal Board (PTAB or Board) designated as informative three decisions denying institution of inter partes reviews. CULTEC, Inc. v. Stormtech LLC, Case No. IPR2017-00777 (Grossman, APJ) (Aug. 22, 2017);...more

US Supreme Court Hears Oral Argument on the Constitutionality of IPR Proceedings

by White & Case LLP on

On Monday, November 27, 2017, the Supreme Court of the United States heard oral argument in Oil States Energy Services, LLC v. Greene's Energy Group, LLC over whether inter partes review (IPR)—an adversarial process used by...more

Wands Analysis Required to Establish Lack of Enablement in PGR Eligibility Review

by McDermott Will & Emery on

Addressing the threshold question of whether a patent is eligible for post-grant review (PGR), the Patent Trial and Appeal Board (Board or PTAB) denied institution of the PGR because the petitioner had not adequately...more

The Importance of Affidavit Evidence in Proving Public Accessibility of Printed Publications

by McDermott Will & Emery on

Addressing the issue of evidence sufficient to establish when a document qualifies as printed publication and prior art, the Patent Trial and Appeal Board (PTAB or Board) issued two decisions reaching differing conclusions,...more

U.S. Supreme Court Hears "Oil States" Oral Arguments Regarding Constitutionality of the Patent Office Review Board

by Brinks Gilson & Lione on

On November 27, 2017, the U.S. Supreme Court heard oral arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, Civ. No. 16-712. The Court will decide whether inter partes reviews violate the U.S...more

A Deep Dive in Petition Filing Stats

For the first time in more than two years, we observed an eye-catching quarter-to-quarter dip in the number of new patents challenged at the PTAB. Slightly more than 200 patents were hit with their first PTAB petition between...more

PTAB Publishes SOP for Handling Remands from the Federal Circuit

The Patent Trial and Appeal Board (“PTAB”) recently issued a Standard Operating Procedure (“SOP”) for remands from the Federal Circuit. Remands of America Invents Act trials (IPR, CBM, and PGR) and ex parte and reexamination...more

Centuries of Precedent are Little Help as IPR Constitutionality Divides Justices

by Robins Kaplan LLP on

This morning the Supreme Court heard arguments in the heavily anticipated case of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC on the question of whether AIA trials at the patent office, such as inter partes...more

Supreme Court Justices’ Questions in Oil States Suggest Inter Partes Review Will Be Upheld as Constitutional

by Winthrop & Weinstine, P.A. on

On Monday, November 27, 2017, the U.S. Supreme Court heard argument in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712. The case presents a direct challenge to the U.S. Patent and Trademark Office’s...more

PTAB Issues Guidance on Motions to Amend in View of Aqua Products

The Patent Trial and Appeal Board (“PTAB” or “Board”) recently issued guidance on motions to amend in AIA trial proceedings following the Federal Circuit’s en banc decision in Aqua Products, Inc. v. Matal, 872 F.3d 1290 (Fed....more

Oil States Energy Services v. Greene’s Energy Group: Supreme Court to Decide if Patents are Private or Public Rights

by Nutter McClennen & Fish LLP on

Rory P. Pheiffer, a partner in Nutter’s Intellectual Property Department and a member of both the Emerging Companies and Life Sciences and Medical Devices practice groups, addressed the Supreme Court Case Oil States Energy...more

PTAB Issues New Remand Procedures

by Knobbe Martens on

On November 16, 2017, the USPTO issued new procedures (“Standard Operating Procedure 9”) for governing cases remanded from the Federal Circuit. These procedures are applicable to all decisions remanded from the Federal...more

The Board Gives Section 325(d) Sharp Teeth—Part II – The Petitioner's Criticality to Selecting and Using The Right Prior Art

This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more

PTAB Issues Guidance on Remand Procedures

On November 15, 2017, the Patent Trial and Appeal Board (PTAB) published a revised Standard Operating Procedure 9 (“SOP 9”) to provide guidance on the PTAB’s procedures for handling cases that have been remanded from the U.S....more

Remands From the Federal Circuit Back to the Patent Trial and Appeal Board: Are They a “Redo” or Something More Limited?

by WilmerHale on

The Court of Appeals for the Federal Circuit (Federal Circuit), the reviewing court for the decisions issued by the Patent Trial and Appeal Board (Board), has handled over 1,000 appeals from the Board on patent trials...more

USPTO Adjusts Fees for PTAB IPR Proceedings

by Jones Day on

On November 14th, the USPTO issued a final rule setting and adjusting patent fees during fiscal year 2017. The new fees, set to take effect January 16, 2018, include upward adjustments of fees for requesting Inter Partes...more

Perspectives on the PTAB Newsletter - November 2017

The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more

What if IPRs are Found Unconstitutional in Oil States?

On November 27, the Supreme Court will hear arguments in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC. The issue is: - Whether inter partes review, an adversarial process used by the Patent and Trademark...more

USPTO Finalizes Rule For Privileged Communications In Trials Before The PTAB

by Weintraub Tobin on

The Leahy-Smith America Invents Act (“AIA”) provided for trials before the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) in inter partes reviews, post-grant reviews, the...more

Increasing Role of Objective Indicia of Nonobviousness in AIA Proceedings

by WilmerHale on

During inter partes review (IPR) proceedings, a patent owner facing a challenge to a patent’s claims on the basis of obviousness may seek to counter this challenge by presenting evidence of objective indicia of...more

Oil States Energy and SAS Institute: SCOTUS to Review Inter Partes Reviews

by Revision Legal on

As we recently discussed with respect to the proposed STRONGER Patents Act of 2017, legal debate continues to swirl around inter partes reviews. The US Supreme Court has entered the ring recently by accepting certiorari on...more

Expanded PTAB Panel Explains Exercise of Discretion on Second-Bite Petitions

by McDermott Will & Emery on

A rare expanded panel (including the chief judge) of the Patent Trial and Appeal Board (PTAB or Board) issued an precedential decision denying requests for rehearing of decisions denying institution in five inter partes...more

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