PTAB Adopts the Phillips Claim Construction Standard in AIA Proceedings
Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered...
View ArticleSupreme Court Holds AIA Did Not Alter the Settled Meaning of “On Sale”
Today, January 22, 2019 the United States Supreme Court unanimously affirmed the Federal Circuit and held that it remains the law under the America Invents Act (AIA) that a confidential sale to a third...
View ArticlePrecedential PTAB Panel Says Petitioners Can Join Their Own Earlier-Filed...
In its first decision since its inception, the Precedential Opinion Panel (“POP”) for the U.S. Patent Trial and Appeal Board (“Board”), in Proppant Express Investments, LLC v. Oren Technologies, LLC,...
View ArticleInformative Whirlpool Decision Reaffirms Importance of Secondary Considerations
Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”. In Whirlpool, the Board reversed the...
View ArticleRecently Designated Precedential PTAB Decision Confirms Objective Indicia of...
Last week, the Patent Trial and Appeal Board (“PTAB”) designated a January 24, 2020 decision, finding objective indicia of nonobviousness, such as evidence of long-felt need and industry praise, saved...
View ArticleRecent USPTO Report Suggests Greater Consistency and Predictability in...
Last week, the US Patent and Trademark Office (“USPTO”) released a report detailing its findings on how the U.S. Supreme Court decision in Alice Corp. v. CLS Bank International, as well as subsequent...
View ArticleFederal Circuit Appeals Continue as Scheduled Without In-Person Arguments
Yesterday the United States Court of Appeals for the Federal Circuit released modifications to court procedures, indicating that all in-person oral arguments are suspended until further notice. Fed....
View ArticlePTAB Designates As Informative a Decision Instituting Post-Grant Review for a...
On June 11, 2020, the Patent Trial and Appeal Board (“PTAB”) designated as informative a July 26, 2019 institution decision granting post-grant review of a design patent for lacking ornamentality. In...
View ArticleDead on Arrival? Federal Circuit Majority Finds That Substitute Claims Live...
Last week a Federal Circuit panel in Uniloc 2017 LLC v. Hulu, LLC issued an important decision regarding inter partes review (IPR) before the Patent Trial and Appeal Board on two questions concerning...
View Article“Anything Goes”– Federal Circuit Says PTAB Can Use Any Means to Knock Out...
Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC confirming the Board’s authority to review contingent substitute claims after the original claims have been held...
View ArticleFederal Circuit Reminds PTAB That Short Cuts Are Not Allowed
Last month, in a precedential decision, the Federal Circuit vacated-in-part and remanded the Patent Trial and Appeal Board’s (“Board”) obviousness determination regarding Alacritech’s computer...
View ArticleSort It Out: Cell Sorting Method with Data Processing Steps Patent Eligible
In XY, LLC v. Trans Ova Genetics, LC (Case 2019-1789, issued July 31, 2020), the Federal Circuit provided another example of a life sciences method claim avoiding patent ineligibility under the Alice...
View ArticleAvoiding IPR Institution: Your Best Defense to an IPR Challenge
The United States Patent and Trademark Office (USPTO) Patent Trial and Appeal Board (PTAB) was once famously referred to by the former chief judge of the Federal Circuit, the honorable Randall Rader,...
View ArticleTip #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...
View ArticleThe Federal Circuit Provides New Guidance for Patent Licensees Wishing to...
The Federal Circuit in Apple Inc. v. Qualcomm Incorporated handed down a decision on April 7, 2021 that provides guidance on the determination of standing for patent licensees who wish to contest the...
View ArticlePatent Owner Tip #4 For Surviving An Instituted IPR: Take the Time to Use...
The expert declaration provides a unique opportunity for Patent Owners to bolster their case during the discovery period of an inter partes review (“IPR”) proceeding. We previously detailed how to...
View ArticlePTAB Admits Mistake, Reverses, and Institutes
In a rare turn of events the Patent Trial and Appeal Board recently granted a rehearing request in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd., No. IPR2020-00208, Paper 14 (P.T.A.B....
View ArticlePatent Owner Tip #9 for Surviving an Instituted IPR: Issues Warranting...
In our previous post we started talking about discovery procedures in inter partes review (“IPR”) proceedings under 37 CFR § 42.51 and, in particular, the scope and timing of seeking limited additional...
View ArticlePTAB Continues Streak of IPR Denials
US Patent Trial and Appeal Board (PTAB) institution denials for inter partes review (“IPR”) and other post-grant review petitions have steadily risen from 13 percent in 2012 to 44 percent in 2020. In...
View ArticleArthrex SCOTUS Ruling: The IPR Show Must Go On, Just with (a Bit) More Oversight
On Monday, in a highly-anticipated decision, a fractured Supreme Court issued its opinion in United States v. Arthrex, et al., striking a portion of the America Invents Act (AIA) as...
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