Motions to Amend: PTO Pilot Program Extended - Patents: Post-Grant Podcast
The final year of Director Vidal’s tenure as the Director of the U.S. Patent and Trademark Office was a busy year for rulemaking at the Office. Since late 2023, five Notices of Proposed Rulemaking (NPRMs) directly related to...more
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
Roku, Inc. v. International Trade Commission, Appeal No. 2022-1386 (Fed. Cir. Jan. 19, 2024) In an appeal from the International Trade Commission (the “Commission”), the Federal Circuit addressed a number of findings...more
In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more
Phillip Morris can’t seem to catch its breath. As discussed in a previous post, just a few weeks ago the Federal Circuit upheld the ITC’s ban on the importation and sale of Phillip Morris’s line of heated tobacco and...more
The US Court of Appeals for the Federal Circuit affirmed a Patent Trial & Appeal Board (Board) decision that claims to a ballistic parachute were obvious over the prior art based on knowledge attributable to artisans and...more
[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more
As reported in our December 2019 newsletter, in Lectrosonics v. Zaxcom the Patent Trial and Appeal Board (PTAB or Board) granted Zaxcom’s motion to amend and, under a nexus-analysis framework, found each of the substitute...more
On July 22, 2020, the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) issued an opinion in Uniloc 2017 LLC v. Hulu, LLC & Netflix, Inc., No. 2019-1686 (Fed. Cir. 2020) authorizing the U.S. Patent Trial &...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Data Scape Limited sued Western Digital in the U.S. District Court for the Central District of California, alleging infringement of four patents that claim methods, systems and apparatuses for transferring music from one...more
In Nike, Inc. v. Adidas AG, No. 19-1262 (Fed. Cir. Apr. 9, 2020), the Federal Circuit offered important guidance to Patent Trial and Appeal Board (PTAB) litigants regarding how the notice requirements of the Administrative...more
The procedural niceties of the U.S. Patent and Trademark Office's implementation of the post-grant review features of the Leahy-Smith America Invents Act continue to be explicated in the Federal Circuit (and of course, the...more
The Federal Circuit affirmed the Patent Trial and Appeal Board's (PTAB) claim construction (and inter partes review (IPR) decision invalidating claims for obviousness) in it recent Genentech, Inc. v. Iancu decision, and also...more
To amend challenged claims during an Inter Partes Review (IPR), the patent owner must show that the proposed amendment responds to a ground of unpatentability at issue in the IPR trial. But in a recent final written decision...more
In reversing a district court decision as to whether a validity issue remained justiciable after the challenged claims were disclaimed, the US Court of Appeals for the Federal Circuit explained that the patent owner’s...more
On remand from the Court of Appeals for the Federal Circuit, the Patent Trial and Appeal Board granted patent owner’s motion to amend on the basis that the totality of the record did not demonstrate by a preponderance of the...more
The US Court of Appeals for the Federal Circuit reversed a dismissal of a complaint for failing to state a claim under FRCP 12(b)(6), finding error in the district court’s use of judicial notice to do fact-finding outside the...more
On October 29, 2018, the Office published a request for comments (“RFC”) on a proposed procedure for motions to amend filed in inter partes reviews, post-grant reviews, and covered business method patent reviews (collectively...more
An IPR of issued patent claims is statutorily limited to prior art challenges based on patents and printed publications under § 102 (novelty) or § 103 (obviousness). The PTAB may not institute an IPR of existing patent claims...more
Federal Circuit Summaries - Before Prost, Moore, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: An IPR petitioner bears the burden of persuasion concerning the patentability of proposed substitute...more
After having its complaint for patent infringement dismissed for failure to state a claim and being denied its request to file an amended complaint in the Middle District of Georgia, Disc Disease Solutions turned to the...more
In an IPR on remand from the Federal Circuit on appeal of a motion to amend, the PTAB considered the scope of briefings of the parties in view of the Federal Circuit’s recent en banc decision Aqua Products v. Matal. The PTAB...more
The PTAB Strategies and Insights Newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio. This month we tackle three important issues: ...more