Most readers have been following the impact of the Federal Circuit’s decision in Arthrex and know that an earlier and less developed Arthrex I case is on cert to the Supreme Court asking the Court to address the appointments...more
Since arriving at the USPTO, Director Iancu has tried to bring clear messages and consistency to the Office. For purposes of this article, we concentrate on the new POP procedures for Board case law and rules, and how the...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
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 Acoustic Technology v. Itron Networked Solutions, the Federal Circuit was faced with a situation in which the Petitioner’s real party-in-interest/privy changed after institution, although the change was in the works before...more
3/24/2020
/ § 315(b) ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Record Preservation ,
Time-Barred Claims ,
Waiver Rule
In extraordinary times, sometimes the ordinary is comforting, so we want to bring you a short newsletter this month and provide some operating details for the major patent agencies in the US.
First, we hope all our...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
3/3/2020
/ Administrative Patent Judges ,
America Invents Act ,
Estoppel ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Litigation Strategies ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
In Personal Audio, the Federal Circuit upheld a district court judgment dismissal of a jury verdict for patent owner throwing out a $1.3 million judgement because the patent was later invalidated at the PTAB. Patent owner...more
2/11/2020
/ Appeals ,
Collateral Estoppel ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Jury Verdicts ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Reversal ,
Subsequent Litigation
The only real answers we are hearing from the patent community is that no one knows what to do or what might happen next --- post Arthrex.
As a quick reminder – the Federal Circuit ruled (1) the current PTAB judges were...more
2/5/2020
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Administrative Proceedings ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Denial of Certiorari ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
Remand ,
Severability Doctrine ,
Split of Authority ,
USPTO
Supplemental Examination was born out of fixing potential inequitable conduct issues before they are raised in a court proceeding. 35 U.S.C. § 257(a); 27 CFR § 1.601; M.P.E.P. § 2800. The stated goal is to improve patent...more
In IPR2019-00567 (Paper 23 at 29-30) and IPR2019-00568 (Paper 22 at 23-24), the PTAB, for potentially the first time, denied institution partially based on the Petitioner raising the same issues in its Petition that had been...more
9/5/2019
/ §314(a) ,
Claim Construction ,
Claim Preclusion ,
Estoppel ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Partial Institution ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
The Federal Circuit recently decided a reexamination case, VirnetX v. Apple and Cisco, that addressed two issues: (1) was requester estopped from maintaining its reexams under the pre-AIA version of 35 U.S.C. § 317(b) (2006)...more
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
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 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 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
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
Sitting En Banc, the CAFC in Click-to-Call v. Ingenio held that complaints dismissed without prejudice can still trigger the time-bar of 35 U.S.C. 315(b)...more
On July 10, 2018, the PTAB informed the patent bar that they designated five decisions as informative for: issue preclusion; use of and versus or when referencing lists; DJ bar for joinder cases; depositions in foreign...more
7/26/2018
/ Administrative Procedure ,
Best Practices ,
Depositions ,
Ex Partes Reexamination ,
Foreign Language ,
Issue Preclusion ,
Joinder ,
Litigation Strategies ,
Motion To Seal ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents