News & Analysis as of

Inter Partes Review (IPR) Proceeding Sua Sponte Appeals

Rothwell, Figg, Ernst & Manbeck, P.C.

Director Review Codified as Director Vidal Steps Down—What is this Power and How Did Vidal Wield It?

With U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s return to private practice in December 2024 and the future permanent Director yet to be tapped for nomination, it is a good time to reflect on one of the...more

McDermott Will & Emery

PTAB MTA Pilot Program to the Rescue

On review of a final written decision from the Patent Trial & Appeal Board in an inter partes review (IPR), the US Court of Appeals for the Federal Circuit found that all challenged claims were obvious but left open the...more

McDermott Will & Emery

PTO Director Requests Input on Patent Trial & Appeal Board Decision Regarding Duty of Candor

McDermott Will & Emery on

On May 3, 2023, the Patent Trial & Appeal Board granted a motion for sanctions brought by Spectrum Solutions LLC against Longhorn Vaccines & Diagnostics LLC. The resulting sanctions order canceled five Longhorn patents. The...more

White & Case LLP

Federal Circuit Potentially Widens Door for PTAB to Identify Its Own Unpatentability Grounds for Substitute Claims

White & Case LLP on

On March 24, 2022, the Court of Appeals for the Federal Circuit criticized the Precedential Opinion Panel's application of its standard for when it is (and isn't) appropriate for the Patent Trial and Appeal Board to sua...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions: Qualcomm Inc. v. Intel Corp., 6 F.4th 1256 (Fed....

Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[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

McDermott Will & Emery

As Due Process Recognizes, it’s Hard to Shoot at a Moving Claim Construction Target

The US Court of Appeals for the Federal Circuit vacated several Patent Trial & Appeal Board (PTAB) decisions as violating due process and the Administrative Procedure Act (APA), referencing the parties’ inability to respond...more

Goodwin

Federal Circuit Certifies AbbVie’s Constitutional Challenge in Consolidated Adalimumab IPR Appeals to U.S. Attorney General

Goodwin on

As we previously reported, currently pending before the Federal Circuit are consolidated appeals from five final written decisions of the Patent Trial and Appeal Board (Board) in inter partes review (IPR) proceedings finding...more

Jones Day

Federal Circuit: PTAB Affirmance Estops All Pending Actions Involving Patent

Jones Day on

In XY, LLC v. Trans Ova Genetics, L.C., Nos. 2016-2054, 2016-2136 (Fed. Cir. May 23, 2018), an appeal from the District of Colorado, the Federal Circuit gave preclusive effect to a PTAB finding, something it has done several...more

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