Depending on the filing rate in the second half of the year, 2021 could end up being the least active year for petition filing since 2013.
Currently, the number of petitions is on pace to approach 1,400, which would narrowly...more
[co-authors: Patrick Murray, Risa Rahman, and Jae Bandeh]
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...more
7/6/2021
/ Assignor Estoppel ,
Disciplinary Proceedings ,
Estoppel ,
Final Written Decisions ,
First Amendment ,
Inter Partes Review (IPR) Proceeding ,
Mahanoy Area School District v B.L. ,
Medical Devices ,
Minerva Surgical Inc. v Hologic Inc. ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Public Schools ,
SCOTUS ,
Snapchat ,
Student Speech ,
Students ,
Tinker v Des Moines Independent Community School Dist. ,
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
6/3/2021
/ Claim Construction ,
Estoppel ,
Final Written Decisions ,
Forum Selection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Inventors ,
IP License ,
L'Oreal ,
Obviousness ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Philip Morris ,
Post-Grant Review ,
Prior Art ,
Remand ,
RJ Reynolds ,
Section 337 ,
USPTO ,
Vacated ,
Written Descriptions
In John Bean, the patent owner’s only competitor, Morris & Associates, responded to a demand letter with evidence of invalidity. John Bean Technologies Corporation v. Morris & Assocs. Inc., Cases 2020-1090, 2020-1148, Slip...more
From the beginning of AIA proceedings, Petitioners that have lost at institution decision phase have tried using Mandamus to circumvent the statutory lack of appeal from institution decisions. Mylan Laboratories Ltd. v....more
4/1/2021
/ § 315(b) ,
America Invents Act ,
Claims Limitations Period ,
Denial of Institution ,
Due Process ,
Inter Partes Review (IPR) Proceeding ,
Mandamus Petitions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
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
3/31/2021
/ § 315(b) ,
America Invents Act ,
Claims Limitations Period ,
Demand Letter ,
Denial of Institution ,
Due Process ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Mandamus Petitions ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO ,
Willful Infringement
In December 2020, the Patent Trial and Appeal Board’s (“PTAB” or “Board”) designated an opinion as precedential (Sotera Wireless, Inc. v. Masimo Corporation), where the Board instituted trial, i.e., did not exercise its...more
1/27/2021
/ Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Judicial Discretion ,
Parallel Proceedings ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
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
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
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
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 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
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
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
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
The USPTO explained the significance of the cases as follows:
Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) – (precedential as to section III.C.5, first paragraph...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
8/30/2019
/ § 315(b) ,
Administrative Proceedings ,
Estoppel ,
Inter Partes Reexamination ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Partial Institution ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Section 325(d) ,
Time-Barred Claims ,
USPTO
A third version of the Trial Practice Guide issued this week as both a Federal Register notice and updates....more