Last week, my partner Justin Krieger published an alert regarding Acting Director Stewart's new guidance on discretionary denial. Shortly thereafter, Acting Director Stewart issued a decision vacating institution of several...more
In a decision issued today, the Federal Circuit addressed the issue of whether an Examiner can rely on the filing date of a provisional application under pre-AIA 102(e) to support a rejection based on a later-filed and...more
Kilpatrick partners John Alemanni and Justin Krieger recently presented a CLE addressing “Building a Winning Evidentiary Record at the PTAB (and Surviving Appeal).”
* The opinions expressed are those of the attorneys and do...more
In a precedential opinion issued this week, the Federal Circuit held that Applicant Admitted Prior Art (“AAPA”) does not constitute “prior art consisting of patents or printed publications” under 35 U.S.C. § 311(b) and thus...more
Today, in an opinion by Chief Justice Roberts, the Supreme court issued its opinion in U.S. v. Arthrex, Inc., vacating the Federal Circuit's opinion in Arthrex v. Smith and Nephew. The Court agreed with the Federal Circuit...more
6/22/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
Today, the USPTO issued a memorandum providing guidance on the use of Applicant Admitted Prior Art (“AAPA”). The guidance limits the use of AAPA, stating “admissions by the applicant in the specification of the challenged...more
The Supreme Court issued two decisions today in the cases of Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., and SAS Institute Inc. v. Iancu, addressing inter partes review (IPR). In Oil States, the...more
4/25/2018
/ America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SCOTUS ,
Seventh Amendment ,
USPTO
The full U.S. Court of Appeals for the Federal Circuit held in Aqua Products “the burden of proving the unpatentability of all claims in an IPR—both original and amended—is on the petitioner.” Five opinions (including one...more
In a recent decision, Judges Wallach and Dyk filed a concurring opinion to express their concerns regarding joinder and expanded panels at the Board. Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co. Ltd., Case No....more
Kilpatrick Townsend’s John Alemanni, Allison Dobson, Matthew Holohan, and Wab Kadaba recently presented on navigating the Post-Grant landscape. Here are three key takeaways from their presentation.
The STRONG Patents Act...more