In a 56 page decision, including a concurrence, the Federal Circuit vacated and remanded based on finding that the Board failed to apply the law correctly by failing to properly consider evidence alleged to show that an RPX...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
U.S. Court of Appeals for the Federal Circuit affirmed a U.S. Patent Trial and Appeal Board (PTAB) decision finding that tribal sovereign immunity does not apply to Inter Partes Review (IPR) proceedings. In so holding, the...more
7/25/2018
/ Adjudicatory Process ,
Administrative Agencies ,
Administrative Proceedings ,
Allergan Inc ,
Appeals ,
Enforcement Actions ,
Inter Partes Review (IPR) Proceeding ,
IP Assignment Agreements ,
Motion to Dismiss ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
You selected your experts – Ms. Boot (an expert for the patent owner, SneakRTech) and Dr. Slipper, PhD (an expert for the Petitioner, BadGuys) - to assist SneakRTech at the PTAB in cases involving aglet patents against...more
7/24/2018
/ Administrative Proceedings ,
Claim Construction ,
Cross Examination ,
Declaration ,
Expert Witness ,
Litigation Strategies ,
Noninfringement ,
Patent Infringement ,
Patent Owner Preliminary Response ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents
Is the appointment of PTAB administrative patent judges (APJs) constitutional? The patent bar is asking in the wake of the Supreme Court’s decision in Lucia v. SEC....more
7/23/2018
/ Administrative Law Judge (ALJ) ,
Administrative Patent Judges ,
Administrative Proceedings ,
Appointments Clause ,
Constitutional Challenges ,
Executive Orders ,
Lucia v SEC ,
Officers of the United States ,
Patent Trial and Appeal Board ,
Patents ,
Securities and Exchange Commission (SEC) ,
Trump Administration ,
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
7/20/2018
/ Administrative Law Judge (ALJ) ,
Administrative Procedure ,
Administrative Proceedings ,
Appeals ,
Constitutional Challenges ,
Depositions ,
Expert Witness ,
Issue Preclusion ,
Joinder ,
Litigation Strategies ,
Lucia v SEC ,
Motion To Seal ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Sanctions ,
SCOTUS ,
USPTO
The first real post-Aqua guidance issued from the Board on June 1, 2018 for motions to amend. Western Digital Corp. v. SPEX Technologies, Inc., IPR2018-00082 and IPR2018-00084 (Paper 13). According to the Western Digital...more
Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being...more
The PTAB Strategies and Insights newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.
This month, we are please to introduce our new...more
5/17/2018
/ Breach of Contract ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Claim Procedures ,
Class Action ,
Fifth Amendment ,
Motivation to Combine ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Comment ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Standard of Review ,
Takings Clause ,
USPTO
The Federal Circuit recently held in Nestlé II that it, and by implication the PTAB, should not relitigate claim construction even for indirectly related patents having different specifications....more
The Board has moved the 103 target without warning.
As noted in last month’s article on POPR (Patent Owner Preliminary Response) declarations, the Board is using POPR declarations to deny institution for lack of motivation...more
The PTAB Strategies and Insights newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.
This month we tackle three important...more
On Friday, March 9, 2018, more than 50 participants at Sterne Kessler’s inaugural Global IP Strategy Conference discussed the PTAB’s reliance on expert declarations at the institution phase. The Board is relying on these...more
As first discussed with the 50+ participants at the inaugural Global IP Strategy Conference held at our firm’s offices on Friday March 9, 2018, the Federal Circuit’s October en banc decision in Aqua Products Inc. v. Matal...more
The PTAB Strategies and Insights Newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.
This month we tackle three important...more
Nothing hurts worse than a Rule 36 (single page, single sentence affirmance of the decision below) after years of work and millions of dollars spent on a case. Rule 36 makes rehearing, en banc review, and/or cert petitions a...more
The PTAB Strategies and Insights Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both...more
On January 8, 2018, the Federal Circuit issued its long-awaited en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018). The issue before the en banc Court was the...more
1/25/2018
/ § 315(b) ,
Appeals ,
Claim Amendments ,
Cuozzo Speed Technologies v Lee ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Motion to Amend ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Time-Barred Claims
The U.S. Constitution guarantees due process before a person can be deprived of life, liberty, or property. The Administrative Procedure Act (APA) enforces the due process protection in the USPTO and Board proceedings. Under...more
1/19/2018
/ Administrative Procedure Act ,
Appeals ,
Claim Construction ,
Constitutional Challenges ,
Due Process ,
Final Written Decisions ,
Notice Requirements ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
The PTAB Strategies and Insights Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both...more
1/18/2018
/ § 315(b) ,
Administrative Procedure Act ,
Appeals ,
Design Patent ,
Due Process ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Non-Appealable Decisions ,
Notice Requirements ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Time-Barred Claims ,
USPTO
This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter.
As we have noted in each of...more
The PTAB is starting to provide teeth to the Federal Circuit’s lead compound analysis making it more difficult for petitioners to successfully challenge chemical patents in AIA proceeding, as well as providing patent owners...more
The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more
SneakRTech Corp. wants you to defend their patent and challenge BadGuys, Incorporated’s patent at the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB). The subject matter: aglets....more
This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more
11/21/2017
/ America Invents Act ,
Ex Partes Reexamination ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Examinations ,
Patent Invalidity ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 325(d)