News & Analysis as of

Partial Institution

Sunstein LLP

For Those Challenging a Patent’s Validity in an IPR, New Clarity on Which Arguments Can Later be Litigated in Court

Sunstein LLP on

Inter partes review—or “IPR”—has become a popular avenue for accused patent infringers to challenge the validity of a patent’s claims outside of federal court. Any interested party may file for IPR, but the basis for...more

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

PTAB Strategies and Insights - September 2020: Snap Shot Summer 2020 - Recent Trends in Applying 315(e)/325(e) Estoppel

This month we first refresh our readers on Shaw and SAS, and then we will look at two recent exemplary cases that we feel are illustrative of the current trends for petitioner estoppel.   We will show that the trend in the...more

Haug Partners LLP

Facebook v. Windy City - Federal Circuit Justifies Judicial Review of PTAB Joinder Decisions at the Institution Stage

Haug Partners LLP on

WHAT DO WE KNOW? 1. On September 4, 2020, the Federal Circuit modified and reissued its March 18, 2020 Facebook v. Windy City opinion to address the Supreme Court’s intervening April 20, 2020 Thryv v. Click-to-Call opinion...more

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

2019 PTAB Year in Review: Analysis & Trends: IPR Estoppel Questions Answered and Remaining

When Congress created inter partes review (“IPR”) proceedings in the Leahy-Smith America Invents Act, it included an estoppel provision to avoid duplicative validity challenges against the same patent claims.1 As set forth in...more

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

2019 PTAB Year in Review: Analysis & Trends: Petitioners Beware Discretionary Denial

In August 2018, the Patent Office foreshadowed that the Board would be expanding the use of its discretion under 35 U.S.C. §§ 314(a)/324(a) and 325(d) to deny petitions. The Office explained that “[t]here may be other reasons...more

McDermott Will & Emery

Rule Against Partial Institution of IPRs Can Mean No Institution at All

McDermott Will & Emery on

Addressing a Patent Trial and Appeal Board (PTAB) decision vacating an earlier partial institution of inter partes reviews (IPRs) in view of an intervening Supreme Court decision against such partial institutions, the US...more

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

PTAB Strategies and Insights - September 2019: Federal Circuit Confirms in BioDelivery v. Aquestive that the PTAB Has Broad,...

In BioDelivery Sciences Int’l v. Aquestive Therapeutics, Inc., the Federal Circuit confirmed that the PTAB has broad discretion to reconsider institution decisions and terminate instituted proceedings even after trial has...more

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

PTAB Strategies and Insights - August 2019: PTAB Extends Discretionary Denial Factors to Parallel ITC Proceedings

In IPR2019-00567 (Paper 23 at 29-30) and IPR2019-00568 (Paper 22 at 23-24), the PTAB, for potentially the first time, denied institution partially based on the Petitioner raising the same issues in its Petition that had been...more

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

PTAB Strategies and Insights - August 2019

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

McDermott Will & Emery

Partial Institutions Not Null and Void if Modified After Institution Deadline

In a final written decision invalidating claims, the Patent Trial and Appeal Board (PTAB) held that it was proper to issue a modification of a timely pre-SAS institution order to include claims previously not included in the...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: SAS Institute v. Iancu, 138 S.CT. 1348...

SAS sought an inter partes review (IPR) of ComplementSoft’s patent. In its petition, SAS alleged that all of the patent’s claims were unpatentable. The PTAB determined to institute trial on some, but not all, of the...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions

In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more

Jones Day

PTAB: Institution Decision Addressing Only One Claim Acceptable Post-SAS

Jones Day on

Last week, the PTAB denied a rehearing request by a patent owner who asserted that the PTAB’s institution decision failed to comply with PTAB rules, specifically 37 C.F.R. § 42.108, because the institution decision only...more

Knobbe Martens

Adidas AG v. Nike, Inc.

Knobbe Martens on

Federal Circuit Summaries - Before Moore, Wallach, and Taranto. Appeal from the Patent Trial and Appeal Board. Summary: The Supreme Court’s decision in SAS Institute Inc. v. Iancu requires the Board in an instituted...more

Jones Day

Federal Circuit Continues To Address Transitional IPR Appeals Post-SAS

Jones Day on

When the Supreme Court issued its decision in SAS Institute regarding partial IPR institution, the PTAB estimated that there were several hundred pending IPRs in which the Board had instituted some, but not all, claims and/or...more

Knobbe Martens

PGS Geophysical AS v. Iancu

Knobbe Martens on

Federal Circuit Summaries - Before Wallach, Taranto, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: The Federal Circuit determined that it had jurisdiction to hear an appeal from a Board decision in...more

Schwabe, Williamson & Wyatt PC

Latest Federal Circuit Court Cases - June 2018 #2

PGS Geophysical AS, v. Andrei Iancu, Appeal Nos. 2016-2470, -2472, -2474 (Fed. Cir. June 7, 2018) - In appeals from three inter partes review, the Federal Circuit addressed transition issues for cases currently on appeal...more

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

Federal Circuit Interprets SAS as Applying to Claims and Grounds

In the wake of the Supreme Court’s decision in SAS Institute v. Iancu—which did away with the Patent Trial and Appeal Board’s (PTAB) partial-institution practice—parties and the Patent Office alike have been trying to...more

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

SAS Decision’s Impact on Pending Appeals from the PTAB

Federal Circuit Sheds Some Light on How SAS May Impact Pending Appeals from the PTAB — Court Terminates Appeals of Partially-Instituted IPRs and Remands Back to the PTAB to Consider Non-Instituted “Claims and Grounds” in...more

Foley & Lardner LLP

SAS Institute: One Month In

Foley & Lardner LLP on

We are now a little over a month since the Supreme Court issued its decision in SAS Institute v. Iancu, where the Court held that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability...more

McDermott Will & Emery

Supreme Court to PTAB: All or Nothing at All

McDermott Will & Emery on

In a 5–4 decision, the Supreme Court of the United States reversed a decision by the US Court of Appeals for the Federal Circuit, holding that once the Patent Trial and Appeal Board (PTAB) institutes an inter partes review...more

Foley & Lardner LLP

SAS Institute: Two Weeks In

Foley & Lardner LLP on

As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more

Jones Day

USPTO Holds Webinar to Discuss Supreme Court’s SAS Decision

Jones Day on

On April 24, 2018, the U.S. Supreme Court issued its decision in SAS Institute Inc. v. Iancu, holding that a decision to institute inter partes review under 35 U.S.C. § 314 may not institute on less all claims challenged in...more

Knobbe Martens

USPTO Issues Guidance on Impact of SAS on AIA Trial Proceedings

Knobbe Martens on

On April 26, 2018, the USPTO issued a one-page guidance document on the impact of the Supreme Court’s recent decision, SAS Institute Inc. v. Iancu, on AIA trial proceedings....more

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

PTAB Chief Judge Addresses Impact of SAS

On April 30, 2018, the Patent Trial and Appeal Board (PTAB) held a “Chat with the Chief” webinar to discuss the impact of SAS Institute Inc. v. Matal, 16-969 (Apr. 24, 2018). The webinar was widely attended, drawing about 700...more

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