Fish Post-Grant Radio: Episode #13: Rick Bisenius
Fallout from the Fintiv Precedential Decision
JONES DAY TALKS®: Appointments of PTAB Judges Ruled Unconstitutional ... What Now?
This recurring feature highlights any new PTAB precedential and/or informative decisions, any new substantive Director review decisions, and any new substantive decisions issued by the Precedential Opinion Panel (POP). The...more
The PTAB Strategies and Insights newsletter provides quarterly updates and insights into how best to handle PTAB trial proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at...more
US Patent and Trademark Office (USPTO) Director Katherine K. Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB or Board) in IPR2020-01234, which granted rehearing and modified the...more
Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more
In 2021, the US Court of Appeals for the Federal Circuit issued four opinions regarding US design patents— two precedential opinions and two unprecedential opinions. Both precedential opinions, In re SurgiSil and Campbell...more
This year, we will mark the 10-year anniversary of the first jury verdict in the landmark IP litigation between Apple and Samsung, which resulted in the jury awarding more than $1B to Apple. More than $500M of that award was...more
Last week saw recently confirmed Judge Cunningham sitting for her first oral arguments (alongside her former boss, Judge Dyk). But we’ll have to wait a bit longer for her first authored opinion. Below we provide our usual...more
Petitioner (Apple, Inc.) filed a petition to institute inter partes on a patent owned by Koss Corporation (Patent Owner). The PTAB considered six factors from Fintiv to assess whether to exercise authority to deny...more
Wow—it was a busy week at the Court last week. Lots of opinions, and lots of precedential ones. There were lots of good choices out there, so we sort of threw a dart at a board to see which one to write about. In the end,...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
The Patent Trial and Appeal Board (Board) designated as precedential two decisions involving situations where the Board determined whether to institute review, using its discretion and based on whether review would be an...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
On December 17th, the PTAB designated two decisions applying the Fintiv factors as precedential. We will break these cases down in detail in the coming days on the PTAB Litigation Blog. Sotera Wireless, Inc. v. Masimo...more
In 2017, Twitter, Inc. (“Twitter”) filed two petitions requesting inter parties review (“IPR”) of U.S. Patent No. 9,083,997 (“the ’997 patent”), with the first petition directed to claims 1-19 and the second petition directed...more
The rate at which the Patent Trial and Appeal Board (“PTAB” or “Board”) institutes Petitions for Inter Partes Review (“IPR”) has been in steady decline since the introduction of the IPR procedure in 2013, and is expected to...more
The authors propose replacing the PTAB’s current NHK-Fintiv factors with the alternative “Babcock-Train Factors” set forth herein These alternative factors have been crafted in an effort to provide clearer institution...more
Last week, the Court did not have many precedential decisions as Washington, D.C., COVID-19 or not, was in its usual August slowdown. Unlike the previous two weeks where we touched upon non-patent issues, we return (kind of,...more
In its precedential decision in Apple Inc. v. Fintiv, Inc., IPR 2020-00019, paper 11 (PTAB Mar. 20, 2020), the PTAB set forth a six factor “holistic” test for balancing considerations of system efficiency, fairness, and...more
On May 5th, the Board designated an order regarding discretionary denial precedential. In the two months since that designation, more than fifteen petitions have been denied under 35 U.S.C. § 314(a) and 324(a) based on the...more
The PTAB has explained that it has discretion to deny an IPR petition even if the petitioner has shown that it meets the statutory threshold for institution, which requires “that there is a reasonable likelihood that the...more
On May 5, 2020 the Federal Circuit formally barred petitioners from seeking Arthrex remands. The Court issued a precedential order clarifying that only qualifying patent owners may seek the Arthrex remedy. Petitioners, unlike...more
In October 2019, a Federal Circuit panel concluded that the status of Administrative Patent Judges (APJs) on the Patent Trial and Appeal Board (PTAB) at the U.S. Patent and Trademark Office (PTO) violated the Appointments...more
On December 20, 2019, the Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB) issued its decision in IPR2018-01039, addressing “What is required for a petitioner to establish that an asserted...more
In a recent precedential decision, Hulu, LLC v. Sound View Innovations, LLC, the Patent Trial and Appeal Board’s Precedential Opinion Panel (POP) clarified the standard for establishing a reference as a “printed publication”...more
In Arthrex, Inc. v. Smith & Nephew, Inc., the Federal Circuit has held that appointments of Administrative Patent Judges of the Patent Trial and Appeal Board ("PTAB") were in violation of the Appointments Clause of the U.S....more