News & Analysis as of

Patent Litigation Duty of Candor

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

PTAB Year in Review – Caveat Experimenter: Using Experimental Data in PTAB Proceedings Comes With Risks

Parties involved in Patent Trial and Appeal Board (PTAB) proceedings sometimes contemplate submitting experimental data to support their positions. Although such data can be useful, there also are risks. Several recent cases...more

Proskauer - Minding Your Business

Duty of Candor Continues Before the PTAB or Does it?     

In an unprecedented PTAB decision involving Spectrum Solutions LLC (“Spectrum”) (Petitioner) and Longhorn Vaccines & Diagnostics (“Longhorn”) (Patent Owner), the Board found all five challenged patents invalid and imposed...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

Akin Gump Strauss Hauer & Feld LLP

Withholding Data That PTAB Would Deem Relevant to Patentability Supports Adverse Judgment in an IPR

The Patent Trial and Appeal Board (PTAB) granted Petitioner’s motions to sanction Patent Owner for failure to meet its duty of candor and fair dealing in five related inter partes review  proceedings. The PTAB found that...more

Jones Day

Duty of Candor is Not to be Ignored

Jones Day on

In a rare exercise of authority, the PTAB issued sanctions against a Patent Owner for failure to meet its duty of candor and good faith by withholding information relevant to the patentability of challenged and substitute...more

McDermott Will & Emery

Neither Narrow Proposed Claim Construction nor Work Product Claim Justify Withholding Material Factual Information

The Patent Trial & Appeal Board of the US Patent & Trademark Office (PTO) canceled all challenged claims across five patents because the patent owner failed to meet its duty of candor by selectively and improperly withholding...more

Skadden, Arps, Slate, Meagher & Flom LLP

PTAB Update - March 2023

Steep Drop in Discretionary Denials — But Will It Last? The Patent Trial and Appeal Board (PTAB) may be becoming more petitioner-friendly following a June 2022 memorandum that significantly narrows a precedent-setting...more

Troutman Pepper Locke

Supplemental Examination: A Tool Worth Further Consideration - Patents: Post-Grant Podcast

Troutman Pepper Locke on

Please join Troutman Pepper’s Intellectual Property and Health Sciences practice groups for the second installment of their podcast series on strategy, trends, and other happenings at the PTAB. Moderated by Troutman Pepper...more

BakerHostetler

Amended PTAB Rules to Take Effect on May 2, 2016

BakerHostetler on

On May 2, 2016, amended rules governing post-grant proceedings before the Patent and Trial Appeal Board (“PTAB”), including inter partes review (“IPR”), post-grant review (“PGR”), and covered business methods (“CBM”), will...more

WilmerHale

Amendments to the Rules of Practice for Trials Before the PTAB Take Effect May 2, 2016

WilmerHale on

The US Patent and Trademark Office has announced amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board that will take effect on May 2, 2016. The amendments generally adopt the rules proposed...more

Foley & Lardner LLP

The New AIA Rules May Help Patent Owners Avoid Trial

Foley & Lardner LLP on

On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to any ongoing AIA...more

Latham & Watkins LLP

PTO Issues New Final Rules for PTAB Proceedings

Latham & Watkins LLP on

New rules give more options to patent owners and petitioners in pre-institution phase. On March 31, 2016, the Patent and Trademark Office (PTO) issued new final rules to govern practice before the Patent Trial and Appeal...more

Lathrop GPM

New Rules For Patent Validity Challenges: What You Need To Know

Lathrop GPM on

On March 31, 2016, the United States Patent & Trademark Office (USPTO) issued new final rules to make targeted modifications to the existing consolidated set of rules implementing provisions of the Leahy-Smith America Invents...more

Foley & Lardner LLP

Federal Circuit Recognizes Limited Patent Agent Privilege

Foley & Lardner LLP on

In In re Queen’s University At Kingston, a divided panel of the Federal Circuit recognized a limited “attorney”-client privilege for patent agents. The majority’s decision to recognize a patent agent privilege is based...more

BakerHostetler

Federal Circuit Upholds Inequitable Conduct Ruling in Ohio Willow Wood Company

BakerHostetler on

In the latest iteration of Ohio Willow Wood Company[1] (OWW), the Federal Circuit upheld a district court ruling of inequitable conduct against OWW despite the presence of a litigation screen. The Federal Circuit had affirmed...more

Mintz - Intellectual Property Viewpoints

The Federal Circuit Newly Recognizes Patent-Agent Privilege

On March 7, 2016, the Court of Appeals for the Federal Circuit recognized “a patent-agent privilege extending to communications with non-attorney patent agents when those agents are acting within the agent’s authorized...more

Foley & Lardner LLP

Dueling Records: Are Statements in Your 510(k) Putting Your Patents at Risk?

Foley & Lardner LLP on

Laboratory developed test (LDT) providers, previously exempt from U.S. Food and Drug Administration (FDA) oversight, under a new FDA proposal, must now consider if their LDTs constitute moderate-risk (Class II) or high-risk...more

McDermott Will & Emery

PTAB Clarifies Requirements for Claim Amendments - MasterImage 3D, Inc. and MasterImage 3D Asia, LLC v. RealD Inc.

In an order perhaps indicating that the tide is turning for patent owners seeking to amend claims in inter partes review (IPR), an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) provided clarification as...more

McDermott Will & Emery

New PTAB Trial Rules Proposed

On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) published a proposal to amend the existing rules of practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered...more

Bracewell LLP

Know Them Before They are Famous (or at least final): The Latest USPTO Proposed Rule Changes

Bracewell LLP on

On August 19, 2015, the United States Patent and Trademark Office (USPTO) released proposed rule changes for trials before the Patent Trial and Appeal Board (PTAB). The proposed rule changes were made in response to input...more

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