One way that reexamination advantageously differs from other administrative post-grant review processes is the absence of word or page counts as a limiting factor in presenting the challenge, here substantial new questions of...more
In the mid-2000s, the U.S. Patent Office (USPTO) determined that reexaminations would be more consistent and legally correct if performed by a centralized set of experienced and specially trained Examiners. As a result, the...more
A review of 2023 reveals it was an active and impactful year in shaping the policy and practice before the Patent Trial and Appeal Board (PTAB or Board) at the U.S. Patent and Trademark Office (USPTO). In fact, all three...more
This Year in Review synthesizes key events and decisions from 2023 into a digestible guide that we hope will serve as a helpful reference for those who practice before, or adjacent to, the PTAB. As in the past, many of our...more
As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more
The Board denied post grant review in Palo Alto Networks, Inc. v. Centripetal Networks, Inc. under 35 U.S.C. § 325(d) after applying the Advanced Bionics framework as informed by the factors outlined in Becton. IPR2021-01520...more
Over the last 20-plus years, US Court of Appeals for the Federal Circuit cases concerning written description and enablement have become a hot-button issue in the chemical and life sciences practices. The year 2021 was no...more
Sterne, Kessler, Goldstein & Fox invites you to the webinar, "PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials," on Monday, March 21, 2022, from 1:00 to 2:00 PM (EDT). In conjunction with the release...more
[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
Several challenges have been made recently to the Patent Trial and Appeal Board’s (“PTAB’s or Board’s”) controversial practice of denying inter partes review (IPR) petitions based on the status of parallel infringement...more
[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
Ex parte reexamination may be requested by either a patent owner or a third party in order to challenge the novelty or nonobviousness of one or more claims in a patent. ...more
The validity of a United States patent can be challenged in federal court litigation. Patents can also be challenged in the U.S. Patent and Trademark Office, which, in most cases, is a quicker and less costly process...more
As of 2020, post grant proceedings have been in use for eight years. Designed as an alternative to district court litigation post grant proceedings have offered litigants a faster and more cost effective forum for resolving...more
Since the inception of inter partes reviews (IPRs) and post grant reviews (PGRs) under the America Invents Act, the option for a patent owner to file a motion to amend its claims was always present, but motions to amend were...more
For the Patent and Trail Appeal Board (“PTAB”), the PTAB allows a petition for inter parties review (“IPR”) to request cancellation of claims in a U.S. patent. For an inter parties review of a patent, the PTAB institutes...more
In Ex parte Grillo-López, Appeal 2018-006082 (Jan. 31, 2020), the USPTO’s Patent Trial and Appeal Board (“PTAB”) held that the standard for a Patent Examiner to show that a reference qualifies as a “printed publication” under...more
LSI and Ericsson petitioned for inter partes review (IPR) of several patents owned by the University of Minnesota (UMN). UMN moved to dismiss each IPR based on state sovereign immunity. The Patent Trial and Appeal Board...more
An important set of factors the Patent Trial and Appeal Board considers when deciding whether to institute inter partes review concerns the filing of multiple petitions challenging the same patent. Part I of this two-part...more
Judge Gilliam of the Northern District of California recently answered this question and provided helpful guidance on the interplay of IPRs, reexaminations and district court litigation. In IXI Mobile (R&D) Ltd., et al., v....more
The sponsors of the STRONGER Patents Act of 2019 -- introduced to the Senate on July 10, 2019 -- may be from both political parties, but they share one clear trait: they hate what post-grant proceedings have done to patent...more
In Return Mail, Inc. v. U.S. Postal Serv., 17-1594, Justice SOTOMAYOR wrote for the majority to overturn a Federal Circuit decision that the U.S. Postal Service had standing to petition for covered business method review. The...more
The Supreme Court ruled in Return Mail that a federal agency is not a "person" who may challenge an issued patent in inter partes review, post-grant review, or CBM review under the AIA. In its 6–3 decision in Return Mail,...more
In a 6-3 opinion authored by Justice Sotomayor, the Supreme Court held that the Federal Government is not a “person” capable of petitioning the Patent Trial and Appeal Board (“PTAB”) to institute patent review proceedings...more
On June 10, 2019 the United States Supreme Court held in Return Mail, Inc. v. United States Postal Service, 587 U.S. ____ (2019) that agencies of the federal government cannot challenge the validity of a patent via USPTO...more