Navigating PTAB’s New Approach to IPR and PGR Discretionary Denial - Patents: Post-Grant Podcast
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
Last week, the Patent Trial and Appeal Board (PTAB) issued a list of FAQs related to the new bifurcated process for discretionary denial established in the March 26 memorandum issued by Acting Director Stewart. The FAQs...more
Key Takeaways: - The Director, in consultation with at least three APJs, will now decide the discretionary denial question, rather than having the merits panel decide the issue. - Discretionary denial will have separate...more
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
On June 22, 2022, the U.S. Patent and Trademark Office (USPTO) announced new interim guidance regarding discretionary denials of patent challenges at the Patent Trial and Appeal Board (PTAB) based on parallel litigation. The...more
In Mobility Workx, LLC v. Unified Patents, LLC, the Federal Circuit in a split decision concluded that Mobility Workx, LLC’s constitutional challenges to structure and funding of the Patent Trial and Appeal Board (“PTAB”) are...more
MOBILITY WORKX, LLC v. UNIFIED PATENTS, LLC Before Newman, Schall, and Dyk. Appeal from the Patent Trial and Appeal Board. Summary: Fee-funded structure of AIA review proceedings does not violate due process....more
A PGR is a trial proceeding conducted by the Patent Trial and Appeal Board (PTAB) to determine the patentability of one or more claims of a patent that issued from an application filed after March 15, 2013. ...more
We surveyed inter partes review proceedings instituted in the year following the U.S. Supreme Court's 2018 decision in SAS Institute Inc. v. Iancu, and identified five takeaways regarding the Patent Trial and Appeal Board's...more
America Invents Act Reviews, or "AIA Reviews" are administrative proceedings which can be used to seek the invalidity of a U.S. Patent. After their creation in 2011, AIA reviews have become an important component of patent...more
Updated April 1, 2020 We previously reported on USPTO COVID-19 related information, including a prior statement that the USPTO was unable to change deadlines. The USPTO has now obtained statutory authority to modify...more
The Appointments Clause of the U.S. Constitution1 provides that “principal officers” of the United States must be appointed by the President upon the advice and consent of the Senate. “Inferior officers,” on the other hand,...more
The statistics below reveal the current trends for proceeding breakdowns, institution rates, and outcomes of design patent PTO litigation proceedings. Three petitions were filed in January 2019, but none have been filed...more
Mylan Pharmaceuticals, Inc., Teva Pharmaceuticals USA, Inc., and Akron, Inc. petitioned for inter partes review (IPR) of various patents owned by Allergan, Inc., which the Board instituted. One week before the scheduled IPR...more
Broadcom sought inter partes review of three patents owned by Wi-Fi One. In response to Broadcom’s petitions, Wi-Fi One argued that the IPR was barred under 35 U.S.C. § 315(b) because Broadcom was in privity with certain...more
As an update to the May 15, 2018 post, available here, some post-SAS trends appear to be taking shape. For the five-month period from May 2018 through September 2018, the PTAB issued 538 institution decisions. Of these, the...more
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
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
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
In light of the Supreme Court of the United States decision in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), the US Court of Appeals for the Federal Circuit remanded an appeal from the Patent Trial and Appeal Board...more
In the wake of Lucia v. SEC, where the Supreme Court held in June 2018 that Administrative Law Judges (ALJs) at the SEC are “officers” subject to the Appointments Clause, there have been challenges to the constitutionality of...more
In a quartet of recent decisions, the Federal Circuit has confirmed that SAS Institute extends beyond mandating the inclusion of all claims when trial is instituted, and extends to all grounds as well. These decisions confirm...more
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
Anyone reading this post is likely well aware that on April 24 the Supreme Court put an end to the PTAB’s practice of instituting inter partes review (IPR) on less than all claims challenged in an IPR petition in SAS...more
The PTAB’s new guidance in light of a recent Supreme Court ruling changes the dynamics for patent owners and petitioners. Key Points: ..Partial institutions are no longer permitted. The PTAB will review all petitioned...more
On the same day that the Supreme Court upheld the constitutionality of inter partes reviews, it ruled in SAS Institute Inc. v. Iancu that the United States Patent and Trademark Office wrongly implemented regulations allowing...more