News & Analysis as of

Inter Partes Review (IPR) Proceeding Administrative Proceedings Claim Construction

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

Reexamination of Expired Patents

Takeaways - - Expired patents may be eligible for reexamination. - Owner’s options during reexamination of an expired patent are severely limited. Similar to reexamination practice, which has long allowed reexamination...more

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

PTAB Strategies and Insights - May 2019: Board Immediately Distinguishes Precedential NHK Decision in Amazon Institution Decision

Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: Nestle USA, Inc. v. Steuben Foods, Inc., 884...

As strategies for managing multiple inter partes reviews (IPRs) of the same or related patents evolve, so does the complexity of collateral estoppel. Collateral estoppel prevents a party from having to re-litigate issues that...more

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

USPTO Changes Claim Construction Standard in Post-Grant Proceedings

The USPTO has published a final rule, changing the claim construction standard applied during post-grant proceedings (inter partes reviews, post-grant reviews, and covered business methods reviews) before the Office’s Patent...more

Troutman Pepper Locke

PTAB Abandons Its Practice Of Broadly Interpreting Claims Of Challenged Patents In Favor Of Phillips Standard Of “Ordinary And...

Troutman Pepper Locke on

In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) has...more

Shook, Hardy & Bacon L.L.P.

USPTO Changes Claim Construction Standard Used In AIA Trial Proceedings

On October 10, 2018, the United States Patent & Trademark Office (USPTO) published a final rule that changes the current “broadest reasonable interpretation” or BRI standard used in inter partes review (IPR), post grant...more

Jones Day

District Court Grants Stay Post-Trial In View Of SAS

Jones Day on

The effects of SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018), continue to reverberate throughout the PTAB and federal district courts. In Prisusa Engineering Corp. v. Samsung Electronics Co., Ltd. et al., No....more

Jones Day

Chief Judge Guidance: SAS Impact, Motions to Amend, and Claim Construction

Jones Day on

On June 5, 2018, Chief Judge David Ruschke and Vice Chief Judge Tim Fink of the Patent Trial and Appeals Board (PTAB) participated in a webinar providing new guidance on three topics: (1) the new claim construction standard...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genzyme Therapeutic Products Ltd. v. Biomarin Pharmaceutical Inc. (Fed. Cir. 2016)

The Federal Circuit affirmed the decision by the Patent Trial and Appeals Board (PTAB) in an inter partes review (IPR) that the claims of Genzyme's U.S Patent Nos. 7,351,410 and 7,655,226 were obvious, in Genzyme Therapeutic...more

Mintz - Intellectual Property Viewpoints

Supreme Court Decides Two Key Aspects of IPR in Cuozzo Speed Techs., LLC v. Lee

The U.S. Supreme Court ruled on June 20, 2016 in Cuozzo Speed Techs., LLC v. Lee that: (1) the statutory authority of the Patent Trial and Appeal Board (“Board”) in instituting an inter partes review (“IPR”) proceeding is...more

Ladas & Parry LLP

Cuozzo V. Lee: Supreme Court Affirmed That Claims Should Be Given Their Broadest Reasonable Interpretation In Inter Partes Review

Ladas & Parry LLP on

On June 20th, in Cuozzo v. Lee, the Supreme Court affirmed the Federal Circuit holding that claims should be given their broadest reasonable interpretation in inter partes review proceedings....more

Farella Braun + Martel LLP

Supreme Court Upholds the PTAB’s Status Quo in Cuozzo

On June 20, 2016, the Supreme Court issued its opinion in Cuozzo Speed Technologies, LLC v. Lee, which unanimously upheld the “broadest reasonable construction” claim construction standard (BRI) used by the Patent Trial and...more

Foley Hoag LLP

Supreme Court Defers to the Patent Office on Institution and Management of Post-Grant Proceedings

Foley Hoag LLP on

In Cuozzo Speed Technologies, LLC v. Lee, the Supreme Court handed a victory to the Patent Office, affirming its broad discretion in the institution and management of post-issuance proceedings created by the Leahy-Smith...more

Patterson Belknap Webb & Tyler LLP

Supreme Court Affirms Cuozzo – Leaving in Place BRI and Judicial Review Limitation for IPR Proceedings

In Cuozzo Speed Technologies, LLC v. Lee, No. 15-446, the Supreme Court affirmed the Federal Circuit’s holdings on claim construction and the scope of judicial review in an inter partes review (IPR) proceeding....more

Morrison & Foerster LLP

Supreme Court Defers to Patent Office on IPR Procedure, Cuozzo Speed Tech., LLC v. Lee

The United States Supreme Court decided today that: (1) the United States Patent and Trademark Office (PTO) acted within its rulemaking authority by adopting the rule that patent claims must be given their “broadest...more

McDonnell Boehnen Hulbert & Berghoff LLP

Cuozzo Speed Technologies LLC v. Lee (2016)

In its first pronouncement regarding the post-grant reviewing proceedings established by the America Invents Act ("AIA"), the Supreme Court ruled that the Patent and Trademark Office's positions on two of the law's provisions...more

Bracewell LLP

Know Them Before They are Famous (or at least final): The Latest USPTO Proposed Rule Changes

Bracewell LLP on

On August 19, 2015, the United States Patent and Trademark Office (USPTO) released proposed rule changes for trials before the Patent Trial and Appeal Board (PTAB). The proposed rule changes were made in response to input...more

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