The movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more
7/20/2019
/ Administrative Backlogs ,
Administrative Procedure ,
America Invents Act ,
Ex Partes Reexamination ,
Patent Expiration ,
Patent Invalidity ,
Patent Ownership ,
Patent Reissue Applications ,
Patents ,
Prior Art ,
Reissue Patents ,
USPTO
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
In Regents of the Univ. of Minn. v. LSI Corporation, Fed. Cir., No. 18-01559, the Federal Circuit extended the inability to stand behind 11th Amendment Sovereign Immunity to patents owned by individual states, such that they...more
6/25/2019
/ Administrative Proceedings ,
Appeals ,
Eleventh Amendment ,
Inter Partes Review (IPR) Proceeding ,
IP Assignment Agreements ,
IP License ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Sovereign Immunity ,
State Universities ,
Tribal Governments
In Return Mail, Inc. v. U.S. Postal Serv., 17-1594, Justice SOTOMAYOR wrote for the majority to overturn a Federal Circuit decision that the U.S. Postal Service had standing to petition for covered business method review. The...more
6/24/2019
/ Administrative Agencies ,
America Invents Act ,
Congressional Intent ,
Covered Business Method Proceedings ,
Ex Partes Reexamination ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
Reversal ,
SCOTUS ,
Standing ,
Statutory Interpretation ,
USPS
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
6/21/2019
/ § 315(b) ,
Administrative Procedure ,
Administrative Proceedings ,
America Invents Act ,
Congressional Committees ,
Government Entities ,
Government Owned Intellectual Property ,
Inter Partes Review (IPR) Proceeding ,
Legislative Agendas ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Real Party in Interest ,
SCOTUS ,
Section 101 ,
Sovereign Immunity
In AVX v Presidio, the Federal Circuit again found the Petitioner could not appeal a partial loss because it lacked standing to appeal as there was no underlying lawsuit on the patent involved in the IPR proceeding....more
Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues...more
5/29/2019
/ Administrative Proceedings ,
Amazon ,
Claim Construction ,
Discovery ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Prior Art
In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more
5/28/2019
/ Claim Construction ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
Motion to Terminate ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Validity ,
Patents ,
Prior Art ,
Section 102 ,
Section 103 ,
Section 112 ,
Trial Court Orders
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
The USPTO issued guidance regarding procedures to stay when reissue or reexaminations are pending during a parallel AIA proceeding. The basic factors that will be considered are...more
The PTAB added three new precedential decisions following an older precedential decision directed to acceptable circumstance for a petitioner to change the real party in interest during trial - even after a bar date has...more
IPO published the following announcement on April 1st:
Today the U.S. Supreme Court announced that it is reversing its infamous 2014 decision on patent eligibility in Alice Corp. v. CLS Bank and remanding. The court took...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
4/25/2019
/ § 315(b) ,
Administrative Proceedings ,
America Invents Act ,
Inter Partes Reexamination ,
Motion To Stay ,
Patent Portfolios ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Real Party in Interest ,
Section 101 ,
USPTO
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
Joinder Petitioners Have Standing To Appeal -
In Mylan v. Research Corporation Tech (RCT), the Patent Owner, who won at the PTAB, argued that time barred joinder petitioners (Mylan, Breckenridge and Alembic - Appellants)...more
In a precedential decision Realtime (page 8-9) and a follow-on non-precedential decision Polygroup (page 15), two Federal Circuit panels (with Dyk on each) appear to hold that a single two-reference obviousness Ground, when...more
2/27/2019
/ Alternative Pleadings ,
Appeals ,
Follow-On Patent Petitions ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Printed Publications ,
Statement of Grounds
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
2/25/2019
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Defense Strategies ,
Joinder ,
Leave to Appeal ,
Litigation Strategies ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Right To Appeal ,
Standing
Total PTAB petition filings dropped to their lowest level since 2014, but the 2018 figure was still in the same range as each of the previous four years. For the second straight year, more PGRs than CBMs were filed, a trend...more
Eleven of thirteen cannabis patent claims survive PTAB challenge.
Insys Development Company, Inc. filed a petition requesting inter partes review of claims 1-13 of GW Pharmaceutical Ltd.’s patent directed to the use of...more
1/28/2019
/ Biopharmaceutical ,
Cannabidiol (CBD) oil ,
FDA Approval ,
Hemp ,
Inter Partes Review (IPR) Proceeding ,
Marijuana ,
Obviousness ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Pharmaceutical Patents ,
Prior Art
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
Rule 36 is a single sentence affirmance. Yet to explain the impact of a Rule 36 decision on later filed cases, the Court needed to issue a 7-page precedential decision. In Virnetx v Apple the Court held Rule 36 creates...more
1/3/2019
/ Ambiguous ,
Appeals ,
Best Practices ,
Collateral Estoppel ,
Motion for Reconsideration ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Printed Publications ,
Rule 36
Recently, the Federal Circuit held that an ex-employee (of Cisco) who founded a competitor (Arista) can challenge their own assigned patent, finding that, after assignment, they are not the patent owner. The Court held that...more
1/2/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Assignor Estoppel ,
Employee Inventors ,
Exit Transactions ,
Inventors ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Reviewability Determinations
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
12/28/2018
/ Administrative Proceedings ,
Assignor Estoppel ,
Collateral Estoppel ,
Employee Inventors ,
Employment Contract ,
Exit Transactions ,
Former Employee ,
Litigation Strategies ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Rule 36 ,
Work-For-Hire
Despite changing claim construction to district court standard, where BRI had always been premised on the patent owners ability to amend, it appears the USPTO is responding to a half-decade of negative comments from the...more
A recent trend at the PTAB has shown timing is everything, and bad timing is held against Petitioner when considering discretionary denial....more