In ABS Global, Inc. v Cytonome/ST, LLC, the Federal Circuit dismissed a Petitioner’s appeal from a U.S. Patent Trial and Appeal Board (“PTAB”) final written decision when it determined that a Patent Owner’s voluntary...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
1/25/2021
/ Appeals ,
Denial of Institution ,
Dismissals ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Mootness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Precedential Opinion ,
USPTO
The U.S. Patent and Trademark Office Patent Trial and Appeal Board issued a final rule regarding institution, sur replies, and presumptions.
First, the Board changes 37 C.F.R. §§ 42.108 and 42.208 to implement SAS...more
The U.S. Patent and Trademark Office Patent Trial and Appeal Board has elevated three panel decisions to precedential this month.
RPX Corp. v. Applications in Internet Time, LLC, IPR2015-01750, Paper 128 (Oct. 2, 2020)...more
In Vidstream v. Twitter, the Federal Circuit affirmed unpatentability of Vidstream’s patent in view of a book even though the copyright page of the version submitted had a later copyright date. Vidstream, LLC. v. Twitter,...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
12/18/2020
/ Final Rules ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
RPI ,
SAS Institute Inc. v Iancu ,
USPTO
As a follow up to our May 2020 article, and taking no side in this article, I write to remind the bar that on November 19, 2020 the Comment period ends for the latest Federal Register Notice on maybe the hottest topic at the...more
In its decision to remand, the Federal Circuit (1) held the Board’s non-analogous art test was wrong and articulated a new test for the Board to follow on remand, and (2) left it up to the Board to make the ultimate decision...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
11/18/2020
/ Comment Period ,
Federal Register ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand
Petitioners beware – the Board holds you to what is submitted on filing day for required documents. In Shenzhen Aurora Technology Company, Ltd. v. Putco, Inc., IPR2020-00670, “[t]he Petition relies on foreign language...more
10/28/2020
/ Affidavits ,
Evidence ,
Filing Requirements ,
Foreign Language ,
Inadvertent Errors ,
Litigation Strategies ,
Patent Filings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Translations
In Network-1 Technologies, Inc. v. Hewlett-Packard Company, the Federal Circuit vacated and remanded the district court’s holding that joinder petitioner Hewlett Packard (“HP”) (1) could have tried to raise new grounds in its...more
10/26/2020
/ §315(e) ,
Appeals ,
Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Judgment As A Matter Of Law ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Vacated
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
10/23/2020
/ §315(e) ,
Administrative Patent Judges ,
Administrative Procedure ,
Arthrex Inc v Smith & Nephew Inc ,
Certiorari ,
Constitutional Challenges ,
Estoppel ,
Joinder ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
SCOTUS ,
United States v Arthrex Inc
This month we first refresh our readers on Shaw and SAS, and then we will look at two recent exemplary cases that we feel are illustrative of the current trends for petitioner estoppel.
We will show that the trend in the...more
In view of the Supreme Court’s Thryv decision, the Federal Circuit recently reissued its original March 2020 decision in Facebook v. Windy City (Windy City I) after granting Facebook’s petition for rehearing and denying...more
9/22/2020
/ § 314(d) ,
35 U.S.C. § 315(c) ,
Appeals ,
Appellate Review ,
Cuozzo Speed Technologies v Lee ,
Facebook ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Litigation Strategies ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Thryv Inc v Click-To-Call Technologies LP
Last month’s newsletter discussed Alacritech, Inc. v. Intel Corp, where patent owner Alacritech appealed a final written decision (FWD) of the Patent Trial and Appeal Board (“Board”) for inter partes review (IPR)...more
9/19/2020
/ Administrative Procedure Act ,
Appeals ,
Burden of Persuasion ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Invalidity ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Reaffirmation ,
Substantial Evidence Standard
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
9/18/2020
/ Administrative Procedure Act ,
Appeals ,
Appellate Review ,
Estoppel ,
Facebook ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
In Alacritech, Inc. v. Intel Corp, Judge Stoll held that under the Administrative Procedure Act (APA) “[the Federal Circuit’s] review of a patentability determination is confined to ‘the grounds upon which the Board actually...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
As reported in our December 2019 newsletter, in Lectrosonics v. Zaxcom the Patent Trial and Appeal Board (PTAB or Board) granted Zaxcom’s motion to amend and, under a nexus-analysis framework, found each of the substitute...more
The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance...more
8/6/2020
/ Administrative Procedure ,
Due Process ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Motion to Amend ,
Notice Requirements ,
Oral Hearings ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
PTAB Precedential Opinion Panel (POP) ,
Sua Sponte
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
7/31/2020
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Nonobvious ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Precedential Opinion ,
PTAB Precedential Opinion Panel (POP) ,
Substitute Claims ,
USPTO
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
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
On June 15, 2020, the Supreme Court issued an Order in Emerson Elec Emerson Electric Co., Petitioner v. SIPCO, LLC, Case 19-966, stating “Petition GRANTED. Judgment VACATED and case REMANDED for further consideration in light...more
6/26/2020
/ America Invents Act ,
Covered Business Method Patents ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Petition for Writ of Certiorari ,
Remand ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Vacated
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
6/25/2020
/ § 315(b) ,
America Invents Act ,
Covered Business Method Patents ,
Delays ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Judicial Review ,
Jury Trial ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Petition for Writ of Certiorari ,
Remand ,
Reversal ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
USPTO ,
Vacated