News & Analysis as of

Post-Grant Review Prior Art Patent-Eligible Subject Matter

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2022 Decisions

As part of the recovery from the global COVID-19 pandemic, the U.S. Court of Appeals for the Federal Circuit took steps to return to normal operations. It began requiring live oral arguments in August 2022 and, by November,...more

Holland & Knight LLP

Something New: PTAB Tackles Section 101 Patent Eligibility

Holland & Knight LLP on

It's not often that we write about pharmaceutical patents on this blog, and even less often that we blog here about PTAB decisions. The former is a function of the Federal Circuit's decision in Vanda Pharmaceuticals Inc. v....more

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

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions: Nike, Inc. v. Adidas AG, 955 F.3d 45 (Fed. Cir....

The patent claim survival rate before the Patent Trial and Appeal Board continues to strongly favor petitioners. Accordingly, motions to amend the challenged claims have been growing among patent owners in inter partes...more

Jones Day

PGR Estoppel Applies to Unasserted Art

Jones Day on

Due to the relatively low number of post-grant reviews (“PGR”) filed to date, not many district courts have spoken on the scope of PGR estoppel. In GREE, Inc. v. Supercell Oy, No. 2:19-cv-00071 (E.D. Texas), Magistrate Judge...more

Goodwin

Issue Twenty-Nine: PTAB Trial Tracker

Goodwin on

The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more

Jones Day

Motion To Strike Invalidity Defense Denied… For Now

Jones Day on

On February 28, 2019, GREE, Inc. (“GREE”) filed a Complaint against Supercell Oy (“Supercell”) for patent infringement of U.S. Patent No. 9,597,594 (the “’594 Patent”), directed to a method for controlling a computer to...more

Akin Gump Strauss Hauer & Feld LLP

Invalidity Defenses Will Not Be Stricken at Pleading Stage Despite Defendant’s Earlier PGR Petition

A district court has denied a patent owner’s motion to strike wholesale a defendant’s affirmative defense of invalidity. The key issue in the motion to strike was the application of the estoppel provision of 35 U.S.C. §...more

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

The Goods on IP - July 2018: Design Patent PTO Litigation Statistics (Through July 19, 2018)

The statistics below reveal the current trends on proceeding breakdowns, institution rates, and outcomes of design patent PTO litigation. Two new design petitions have been filed since May – the first since April 2017. Two...more

Knobbe Martens

Federal Circuit Review | October 2016

Knobbe Martens on

Withdrawal of Claims During Prosecution Can Trigger Prosecution History Estoppel In UCB, Inc. v. Yeda Research and Development Co., Ltd., Appeal No. 2015-1957, the Federal Circuit held that prosecution estoppel can apply even...more

McDonnell Boehnen Hulbert & Berghoff LLP

Netsirv v. Boxbee, Inc. (PTAB 2016)

A post grant review (PGR) is an administrative reconsideration of a recent-granted U.S. patent. The proceeding is held in the USPTO, before that body's Patent Trial and Appeal Board. A petition for PGR is timely if it is...more

McDermott Will & Emery

Petitioner Wins Uncontested Alice Fight - Netsirv v. Boxbee, Inc.

McDermott Will & Emery on

In a decision to institute post-grant review, the Patent Trial and Appeal Board (PTAB or Board) clarified the importance of corroboration to establish the credibility of testimony relating to prior public use in a post grant...more

Foley & Lardner LLP

What Is the Latest on Amendments in PTAB Proceedings?

Foley & Lardner LLP on

Among other topics, a recent web conference hosted by George Quillin and Jeff Costakos tackled the latest developments in amendment practice before the PTAB. The conference addressed the very recent Federal Circuit...more

McDermott Will & Emery

PTAB Institutes Very First Post-Grant Review (PGR) - American Simmental Association v. Leachman Cattle of Colorado, LLC

Representing the first decision of its kind, the Patent Trial and Appeal Board (PTAB or Board) instituted the first post-grant review (PGR) under the American Invents Act (AIA). American Simmental Association v. Leachman...more

JAMS

Effect On Settlement Of Post-Grant Patent Review Proceedings

JAMS on

The recent America Invents Act both modified and created procedures for challenging patents in proceedings before the United States Patent and Trademark Office (PTO) after they have been issued, which are called post grant...more

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