Jones Day Talks: PTAB's Busy Docket and What's Changed After SAS Institute
Podcast: PTAB Changes After SAS: New Litigation Tactics & Further Changes to Come
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
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
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
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
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
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
The US Court of Appeals for the Federal Circuit reversed a finding of obviousness by the Patent Trial and Appeal Board (PTAB), concluding that the finding was based on a reference that was included only in a non-instituted...more
On June 24, 2019, the Supreme Court granted the petition for certiorari in Thryv, Inc. fka Dex Media Inc. v. Click-to-Call Technologies, LP on the question of whether 35 U.S.C. § 314(d) permits appeal of the Patent Trial and...more
White & Case Technology Newsflash - On December 9, 2019, the Supreme Court heard oral arguments in Thryv, Inc. v. Click-to-Call Technologies, Case No. 18-916. The case involves the proper application of Section 315(b) of the...more
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
Jones Day's Dave Cochran and Matt Johnson discuss recent developments in patent litigation and appeals, including the continuing importance of the PTAB as a jurisdiction of first choice for patent disputes in the United...more
Those familiar with Patent Trial and Appeal Board proceedings are no doubt aware of some basic trends with respect to post-grant challenges: Institution rates have dropped over the past two years to around 60 percent, and the...more
The Board’s Final Written Decision Must Address All Grounds for Unpatentability Raised in a Petition for Inter Partes Review - In Adidas AG v. Nike, Inc., Appeal Nos. 2018-1180, 2018-1181, the Federal Circuit held that...more
PATENT CASE OF THE WEEK - JTEKT Corporation v. GKN Automotive Ltd., Appeal No. 2017-1828 (Fed. Cir. Aug. 3, 2018) The Federal Circuit dismissed an appeal from an inter partes review, holding that, although JTEKT...more
Biodelivery Sciences Intl. v. Aquestive Therapeutics, Inc. (No. 2017-1265, -1266, -1268, 7/31/18) (Newman, Lourie, Reyna) - Newman, J. Remanding IPRs so the Board can consider non-instituted claims and grounds per the...more
In This Issue - US Taxation of IP After Tax Reform - U.S. taxation of intellectual property has become astoundingly more complex after the Tax Cuts and Jobs Act. The new rules are so complex that the IRS and Treasury...more
The effects of SAS Institute Inc. v. Iancu, 138 S.Ct. 1348 (2018), continue to reverberate throughout the PTAB and federal district courts. In Prisusa Engineering Corp. v. Samsung Electronics Co., Ltd. et al., No....more
Supreme Court Upholds Constitutionality of IPRs, Requires PTAB to Decide Validity of All Challenged Claims - Oil States Energy Services v. Greene’s Energy Group & SAS Institute v. Iancu (24 April 2018)....more
On the same day that the Supreme Court upheld the constitutionality of inter partes reviews, it ruled in SAS Institute Inc. v. Iancu that the United States Patent and Trademark Office wrongly implemented regulations allowing...more
On April 24, 2018, the same day that the Supreme Court upheld the constitutionality of inter partes review (IPR) challenges to issued patents in one decision (Oil States Energy Services v. Green’s Energy Group), it also...more