News & Analysis as of

Covered Business Method Proceedings

Supreme Court Vacates Federal Circuit Decision Defining the Scope of CBM Review

by WilmerHale on

On May 14, 2018, the Supreme Court granted WilmerHale client PNC Bank National Association's (PNC Bank) petition for writ of certiorari and vacated a decision of the US Court of Appeals for the Federal Circuit restricting the...more

USPTO Proposes Change In Claim Construction Standard For PTAB Proceedings Under The AIA

by Weintraub Tobin on

Currently, the standard for claim construction is different in AIA reviews before the United States Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB) than in proceedings in federal district courts...more

USPTO Proposes Change In Claim Construction Standard For Post-Grant Proceedings

by Pepper Hamilton LLP on

On May 9, 2018, U.S. Patent and Trademark Office (PTO) issued a notice of proposed rule for changing the standard for construing claims in unexpired patents in inter partes review (IPR), post-grant review (PGR), and...more

USPTO Proposes Phillips-Type Claim Construction For Post Grant Proceedings at the PTAB

by Knobbe Martens on

The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard...more

USPTO Proposed Rule Change to Adopt the Same Standard for Interpreting Claims in AIA Trials as the US District Courts and ITC

The big news of this week in the U.S. patent world is the publication of the Notice of Proposed Rule Making (NPRM) by the U.S. Patent & Trademark Office (USPTO) on May 9, 2018, for “Changes to the Claim Construction Standard...more

PTO Proposes Replacing Broadest Reasonable Interpretation Claim Construction Standard in IPR, PGR, CBM Proceedings

by Goodwin on

Today, the PTO announced proposed rulemaking to change the claim construction standard applied by the PTAB in IPR, PGR, and CBM proceedings. In particular, the PTO proposes replacing the broadest reasonable interpretation...more

Supreme Court Confirms Inter Partes Review Is Constitutional

by Snell & Wilmer on

In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the United States Supreme Court held today, in a 7-2 decision, that the inter partes review process under the America Invents Act (AIA), 35 U.S.C. § 100 et...more

Oil States Energy Services, LLC. v. Greene's Energy Group, LLC (2018)

Earlier today, April 24, 2018, the Supreme Court held in Oil States Energy Services, LLC v. Greene's Energy Group, LLC that inter partes review proceedings do not violate Article III or the Seventh Amendment of the...more

Minnesota Patent Litigation Wrap-Up – March 2018

by Fish & Richardson on

This post continues our monthly summary of patent litigation in the District of Minnesota, including short summaries of various substantive orders issued in pending cases....more

PTAB Strategies and Insights - April 2018

The PTAB Strategies and Insights newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio. This month we tackle three important...more

Defendant Is Not Estopped from Relying on a Prior Art Reference in District Court that Is Related to a Reference Used in a CBM So...

by Knobbe Martens on

In Solutran, Inc. v. U.S. Bancorp & Elavon, Inc., No. 13:cv-02637, 2018 WL 1276999 (D. Minn. Mar. 12, 2018), the court denied the plaintiff’s Motion in Limine and held that CBM estoppel does not apply to related applications...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

PTAB Designates Two New Informative Decisions Addressing Its Discretion To Deny Review Under 35 U.S.C. § 325(D) Based On Prior...

by Brooks Kushman P.C. on

The PTAB recently designated two decisions as informative that concern its discretion to deny institution of an IPR/CBM petition. Under 35 U.S.C. § 325(d), “In determining whether to institute or order a proceeding . . . the...more

2017 PTAB Year in Review

Wilson Sonsini Goodrich & Rosati is pleased to present our 2017 PTAB Year in Review. We begin our report with a review of 2017 petition filings at the Patent Trial and Appeal Board (PTAB), which continues to be one of the...more

PTAB Statistics for Calendar Year 2017

by Jones Day on

The PTAB has posted the AIA Trial Statistics through the end of calendar year 2017. The statistics are available for download at the PTO website....more

Post-Institution Disclaimer Insufficient to Avoid CBM Review

by Knobbe Martens on

The PTAB has determined that a patent owner may not moot a CBM proceeding by disclaiming claims post-institution. Emerson Electric Co. v. SIPCO, LLC, CBM2016-00095, Paper 39 (P.T.A.B. Jan. 16, 2018)....more

Portion of PTAB’s Facebook Decision Addressing Pre-Institution Statutory Disclaimers Designated as Precedential

True to its ongoing effort to increase the number of precedential decisions, the Patent Trial and Appeal Board (“P.T.A.B.”) designated, on December 21, 2017, a portion of its Decision on Petitioner’s Request for Rehearing in...more

Broadening Your Issued Patent - A Chance to Fix the Past

by Workman Nydegger on

Patent owners considering enforcement frequently wonder what they can do to strengthen their patent, more commonly to add claims that better cover known infringers, but also whether to correct errors in spelling and syntax. ...more

PTAB Denies CBM Institution Based on Technological Invention Exception

by Jones Day on

On December 1, 2017, the PTAB denied institution of a covered business method (“CBM”) petition because the challenged patent is directed to a “technological invention” and therefore is ineligible for CBM review under section...more

Supreme Court Hears Argument in SAS Institute, Inc. v. Complementsoft, LLC

Perhaps overlooked in the widespread assessments of the Supreme Court's questioning of the parties in Oil States Energy Services, LLC. v. Greene's Energy Group, LLC is the argument before the Court in SAS Institute, Inc. v....more

Is a Patent a Private or Public Right? -- Supreme Court Hears Oral Arguments in Oil States Energy Services, LLC. v. Greene's...

Leading up to the Supreme Court oral argument for Oil States Energy Services, LLC. v. Greene's Energy Group, LLC on November 27, 2017, there was a lot of discussion regarding whether patents were a private or public right. ...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

Oil States Energy Services, LLC v. Greene's Energy Group, LLC -- Positions Taken in Selected Amicus Curiae Briefs

On November 27, 2017, the Supreme Court considered the question of whether the inter partes review process established by the U.S. Patent and Trademark Office in implementing portions of the Leahy-Smith America Invents Act or...more

November 2017: Seven Supreme Court Cases to Watch This Term

Justice Neil Gorsuch began his first full Term on the Supreme Court this October, with court-watchers eagerly anticipating which cases the Supreme Court will take and waiting to see how Justice Gorsuch will affect the...more

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