4 Key Takeaways | Updates in Standard Essential Patent Licensing and Litigation
Behaving Badly: OpenSky v. VLSI and Sanctions at the PTAB — Patents: Post-Grant Podcast
Scott McKeown Discusses PTAB Trends and Growth of Wolf Greenfield’s Washington, DC Office
USPTO Director Review — Patents: Post-Grant Podcast
The Briefing: Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions
Podcast: The Briefing - Failure to Disclose Relationship with Real Party in Interest Results in Serious Sanctions
Disputing Patent-Eligible Subject Matter in PGRs and IPRs - Patents: Post-Grant Podcast
Reexamination in IPR and PGR Practice – Patents: Post-Grant Podcast
Reissue in IPR and PGR Practice – Patents: Post-Grant Podcast
3 Key Takeaways | Third party Prior Art Submissions at USPTO
Discretionary Denials at the PTAB: What to Expect? - Patents: Post-Grant Podcast
Motions to Amend: PTO Pilot Program Extended - Patents: Post-Grant Podcast
Drilling Down: Real Parties in Interest and Time Bars - Patents: Post-Grant Podcast
JONES DAY TALKS®: Supreme Court Rules on Constitutionality of Administrative Patent Judges
IPR Institution and Early Intervention - Patents: Post-Grant Podcast
Jones Day Talks®: Patent Litigation, PTAB, Iancu's Legacy, and Institution Discretion
[IP Hot Topics Podcast] Innovation Conversations: Andrei Iancu
Nota Bene Episode 99: Unpacking the Pendulum of American Patent Policy Then, Now, and Forward with Rob Masters
Fallout from the Fintiv Precedential Decision
Six Things You Should Know About Inter Partes Review
In Thermaltake Technology Co., Ltd. et al v. Chien-Hao Chen et al, IPR2024-01230, Paper 12 (PTAB Feb. 19, 2025), the PTAB granted the institution of inter partes review (“IPR”) while an ex parte reexamination (“EPR”) on the...more
Ex parte reexamination (EPRx) comes with risks and rewards for both patent challengers and patent owners. Patent challengers enjoy a lower threshold for institution and avoid the estoppel risk of other post-grant proceedings...more
Ex parte reexamination (EPRx) is a powerful tool that allows any party — including the patent owner — to request that the United States Patent and Trademark Office (USPTO) reassess the validity of an issued patent based on...more
Ex parte reexamination proceedings have been available for over 40 years. The reexamination statutes, Public Law 96-517 of July 1, 1981 (also known as the Bayh-Dole Act), included 35 U.S.C. § 303, which codified, in part,...more
Before Bryson, Lourie, and Reyna. Appeal from the United States Patent and Trademark Office (“PTO”), Patent Trial and Appeal Board (“Board”). Summary: Estoppel under 37 C.F.R. § 42.73(d)(3)(i) only applies to obtaining new...more
In our PTAB Spotlight Series, attorneys will share their valuable insights on PTAB practice today, the challenges and opportunities clients face, and the trends practitioners should follow....more
The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...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
This case addresses how Patent Term Adjustment (PTA) interacts with obviousness-type double patenting (ODP). Background - Cellect sued Samsung Electronics, Co. for infringement of four patents. Subsequently, Samsung...more
The Patent Trial and Appeal Board (“PTAB”) recently published a revised PTAB Oral Hearing Guide (August 2023) updating prior guidance on hearings. The revised Guide includes changes to: 1. Remote participation in PTAB...more
In decisions rare of their kind, the U.S. Patent and Trademark Office (“USPTO”) terminated two ex parte reexaminations in view of inter partes review (“IPR”) proceedings initiated by a different party. The decisions represent...more
Varian filed two petitions for IPR of BMI’s ’096 patent, which the Board instituted. Elekta filed copycat petitions and successfully joined Varian’s two instituted IPRs. A previously filed, parallel ex parte reexamination on...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
On August 26, in Best Medical International, Inc. v. Elekta Inc., the Federal Circuit held that a patent owner lacked standing to appeal an inter partes review (IPR) decision as to a claim the patent owner had previously...more
The US Court of Appeals for the Federal Circuit dismissed a portion of an appeal from the Patent Trial & Appeal Board (Board) regarding obviousness because the patentee did not have standing to challenge the decision...more
Best Medical International, Inc. v. Elekta Inc., Appeal Nos. 2021-2099, -2100 (Fed. Cir. Aug. 26, 2022) - In this week’s Case of the Week, the Federal Circuit addressed issues of jurisdiction where a challenged claim was...more
In an opinion related to its 2021 ruling that a decision in earlier inter partes reexaminations of related patents had a preclusive effect that collaterally estopped the Patent Trial & Appeal Board (Board) from making new...more
In Alarm.com Incorporated v. Hirshfeld1 the Federal Circuit analyzed whether a party’s challenge to the United States Patent & Trademark Office (“USPTO”) Director’s decision to vacate requests for ex parte reexamination...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
The USPTO Patent Trial and Appeal Board (PTAB) has increasingly used its discretionary denial authority in recent years. Although the PTAB’s discretion under 35 U.S.C. § 314(a) and Fintiv grabbed many headlines in 2021, the...more
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 patent litigation. In its first...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
In Alarm.com Inc. v. Hirshfeld, the US Court of Appeals for the Federal Circuit ruled that decisions by the US Patent and Trademark Office Director vacating ex parte reexamination based on estoppel may be subject to judicial...more