News & Analysis as of

SAS Institute Inc. v Iancu

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

Kilpatrick

Recent Rulings on IPR Estoppel

Kilpatrick on

First, a bit of background. Inter-Partes Review (IPR) estoppel applies to “any ground that the petitioner raised or reasonably could have raised during that inter partes review.” 35 U.S.C. § 315(e). In 2018, The Shaw decision...more

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

PTAB Strategies and Insights - December 2020: U.S. Patent and Trademark Office Issues Final Rules and Comments Implementing SAS,...

The U.S. Patent and Trademark Office Patent Trial and Appeal Board issued a final rule regarding institution, sur replies, and presumptions. First, the Board changes 37 C.F.R. §§ 42.108 and 42.208 to implement SAS...more

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

PTAB Strategies and Insights - December 2020

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

Jones Day

BREAKING: PTAB Publishes Final Rule Package

Jones Day on

On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference...more

Mintz - Intellectual Property Viewpoints

Tip #4 for Avoiding IPR Institution: Don’t Argue Facts

We’ve previously written that the best defense to an IPR challenge is avoiding IPR institution altogether. In addition to the other tips discussed in this series of posts, another strategy for avoiding institution is focusing...more

Mintz - Intellectual Property Viewpoints

Tip #3 for Avoiding IPR Institution: Use Disclaimers Strategically

Under U.S. patent law, “No inter partes review will be instituted based on disclaimed claims.” 37 C.F.R. § 42.107(e). And petitioners only need to demonstrate a reasonable likelihood of prevailing with respect to one...more

Perkins Coie

The Supreme Court’s SAS Decision: Has All-or-Nothing Institution Created a Wave of Change?

Perkins Coie on

2020 | Attorney Publications When the U.S. Supreme Court decided SAS Institute Inc. v. Iancu in the spring of 2018, it held that the Patent Trial and Appeal Board must institute inter partes review on either all claims raised...more

Knobbe Martens

Federal Circuit Review - July 2020

Knobbe Martens on

Unconstitutionally Appointed Judges Cannot Decide Ex Parte Appeals - In In Re Boloro Global Limited, Appeal No. 19-2349, When administrative patent judges are unconstitutionally appointed, their decisions in ex...more

WilmerHale

5 Takeaways From Post-SAS Inter Partes Reviews

WilmerHale on

We surveyed inter partes review proceedings instituted in the year following the U.S. Supreme Court's 2018 decision in SAS Institute Inc. v. Iancu, and identified five takeaways regarding the Patent Trial and Appeal Board's...more

Haug Partners LLP

Uniloc v. Hulu - Federal Circuit Clash over Scope of PTAB Review of Substitute Claims

Haug Partners LLP on

WHAT DO WE KNOW? 1. On July 22, 2020, a sharply split Federal Circuit panel held that “[t]he PTAB correctly concluded that it is not limited by § 311(b) in its review of proposed substitute claims in an IPR, and that it...more

Knobbe Martens

PTAB Cannot Shortcut the Two-Step Obviousness Analysis

Knobbe Martens on

FITBIT, INC. v. VALENCELL, INC. Before Newman, Dyk, and Reyna. Appeal from Patent Trial and Appeal Board. Summary: Notwithstanding its rejection of the Petitioner’s proposed claim construction, the PTAB may not end an...more

McDonnell Boehnen Hulbert & Berghoff LLP

Adidas AG v. Nike, Inc. (Fed. Cir. 2020)

Although the Federal Circuit faced obviousness issues that were simple to resolve in Adidas AG v. Nike, Inc., it saw an opportunity to continue to clarify its jurisprudence regarding standing on appeal from an adverse final...more

Jones Day

June Boardside Chat: New Developments in AIA Trials

Jones Day on

On June 11, 2020, the Patent Trial and Appeal Board (PTAB) held a Boardside Chat webinar to discuss new developments in AIA trials. The discussion featured panelists Vice Chief Judge Michael Tierney and Lead Judge William...more

McDermott Will & Emery

USPTO Proposes New Rules for Post-Grant Proceedings

The United States Patent and Trademark Office (USPTO) proposed changes to the rules of practice for instituting review on all challenged claims or none in inter partes review (IPR), post-grant review (PGR) and the...more

Foley & Lardner LLP

Proposed PTAB Rule Changes: More of the Same?

Foley & Lardner LLP on

Today, May 27, 2020, the USPTO published in the Federal Register a new set of proposed rule changes that mostly codify the way contested proceedings are conducted in front of the Patent Trial and Appeal Board. The proposed...more

Morgan Lewis

Supreme Court PTAB Assessment of One-Year Inter Partes Review Time Bar Is Non-Reviewable

Morgan Lewis on

With this decision, the US Supreme Court again prioritizes giving the US Patent and Trademark Office (PTO) a second chance to review and potentially weed out “bad patents,” over permitting parties the opportunity to challenge...more

McDonnell Boehnen Hulbert & Berghoff LLP

Supreme Court Prohibits Time-Bar Appeals In PTAB Cases

Yesterday, in Thryv, Inc. v. Click-to-Call Technologies, LP[i], the Supreme Court ruled that the provisions of 35 U.S.C. § 315(b)[ii], which preclude a petitioner from filing an inter partes review petition more than one year...more

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

Supreme Court Holds That PTAB Time-Bar Rulings Are Non-Appealable

In Thryv, Inc. v. Click-to-Call Technologies, LP the Supreme Court held, 7-2, that patent owners cannot appeal determinations by the Patent Trial and Appeal Board (PTAB) declining to apply the time-bar of 35 U.S.C. § 315(b)....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: Success of Motions to Stay Rising, But Why?

Defendants sued for patent infringement in district court commonly seek litigation stays based on an American Invents Act (AIA)-contested proceeding that assesses the validity of the patents-in-suit before the Patent Trial...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

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit: PTAB May Not Institute on Grounds Left out of IPR Petition

The Federal Circuit recently addressed whether the Patent Trial and Appeal Board (PTAB) can institute inter partes review (IPR) on a ground not advanced by the petitioner, as well as whether the general knowledge of a person...more

McDermott Will & Emery

PTAB May Not Cancel Indefinite Claims in IPR, No Matter What

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit imposed limits on what the Patent Trial and Appeal Board (PTAB) is authorized to do by statute when dealing with challenged claims in an inter partes review (IPR) that it finds...more

Troutman Pepper

The PTAB Definitely Cannot do That

Troutman Pepper on

Samsung Electronics America, Inc. v. Priusa Engineering Corp., Appeal Nos. 2019-1169, -1260 (Fed. Cir. Feb. 4, 2020). Samsung filed an IPR petition against claims 1-4, 8 and 11 of U.S. Patent No. 8,650,591 owned by Priusa....more

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