News & Analysis as of

Statutory Deadlines Patent Litigation

Haug Partners LLP

Purdue v. Collegium: Upholding the Board’s Authority to Issue a Final Written Decision Even After the Statutory Deadline Has...

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On November 21, 2023, the Federal Circuit in Purdue Pharma L.P et al. v. Collegium Pharm., Inc. (i) affirmed that the Patent Trial and Appeal Board (“Board”) has authority to issue a Final Written Decision after the statutory...more

McDermott Will & Emery

Delay Is Okay: Final Written Decisions Can Be Issued After Statutory Deadline

McDermott Will & Emery on

In a matter of first impression, the US Court of Appeals for the Federal Circuit concluded that the Patent Trial & Appeal Board has the authority to issue a final written decision (FWD) in a post-grant review (PGR) proceeding...more

Jones Day

Failure to Make Full Sotera-Stipulation Contributes to Denial

Jones Day on

In an increasingly rare exercise of discretion, the PTAB denied institution of inter partes review under Fintiv in Zhuhai Cosmx Battery Co., Ltd. v. Ningde Amperex Technology Limited, IPR2023-00587. The PTAB reasoned that...more

Jones Day

Deadline IPR Service Fails to Bar Institution

Jones Day on

The PTAB recently granted institution of inter partes review despite the Patent Owner not receiving the petition for the proceeding until three business days after the statutory deadline. See Kahoot! ASA and Kahoot Edu, Inc.,...more

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

PTAB Strategies and Insights - July 2021: What Court Stipulations Persuade the PTAB in Petitioners’ and Patent Owners’ Favor on...

Petitioners and Patent Owners alike have started filing stipulations in district court and at the International Trade Commission to leverage the Fintiv factors in their favor on the issue of discretionary denial at the Patent...more

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

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] 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...more

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

PTAB Strategies and Insights - June 2020: Purposely Picking Weekend or Holiday When Stipulating to New Due Dates May Void Next...

Different Board panels have made inconsistent decisions on the next-business day rule under 35 U.S.C. § 21(b); 37 C.F.R. § 1.7 depending on whether the due date is statutory or stipulated by the parties. For example, when...more

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

PTAB Strategies and Insights - June 2020: Patent Owner's Delay in District Court Causes the PTAB to Reverse Course and Grant a...

The Board made a rare reversal of an institution decision – turning a denial of institution into trial in Sand Revolution v . Continental Intermodal Group-Trucking, IPR2019-01393, Paper 24 (PTAB June 16, 2020). The denial had...more

Akin Gump Strauss Hauer & Feld LLP

The USPTO Provides Deadline Extensions Through the CARES Act, Including for Inter Partes Reviews at the Patent Trial and Appeal...

- The CARES Act grants the Director of the USPTO temporary authority to “toll, waive, adjust, or modify” statutory deadlines under the Title 35 of the United States Code governing patent law. - In a Notice published on...more

Wilson Sonsini Goodrich & Rosati

Patent Post-Grant Proceedings Continue Despite Covid-19 Disruptions

The Patent Trial and Appeal Board (PTAB) and the United States Court of Appeals for the Federal Circuit (CAFC) have made adjustments in their practices to accommodate the new realities of COVID-19 and social distancing, but...more

Akin Gump Strauss Hauer & Feld LLP

PTAB: Informal Delivery of Complaint Does Not Start One-Year Clock for Filing IPR

A Patent Trial and Appeal Board (PTAB or Board) panel has determined that emailing a proposed amended complaint is not “service of a complaint” under 35 U.S.C. § 315(b). On January 23, 2018, Aristocrat Technologies, Inc....more

Akin Gump Strauss Hauer & Feld LLP

PTAB Has Authority to Modify Initial Institution Decision in Light of SAS

In a recent final written decision, the Patent Trial and Appeal Board (PTAB) has determined that it was not unlawful for it to modify its institution decision following the SAS Supreme Court case. In the PTAB proceeding,...more

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