Published Patent Applications Are Prior Art as of the Filing Date, Not the Publication Date - Lynk Labs raises a simple question of statutory interpretation with surprisingly important ramifications: in inter partes review,...more
On June 22, 2022, the U.S. Patent and Trademark Office issued two documents regarding the Patent Trial and Appeals Board's discretionary denials of post-grant challenges based on parallel litigation: a retrospective study of...more
Although the Federal Circuit faced obviousness issues that were simple to resolve in Adidas AG v. Nike, Inc., it saw an opportunity to continue to clarify its jurisprudence regarding standing on appeal from an adverse final...more
6/29/2020
/ Adidas ,
Appeals ,
Evidence ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Nike ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Remand ,
Reversal ,
SAS Institute Inc. v Iancu ,
Standing
Less than two years ago, in Return Mail, Inc. v. U.S. Postal Service, 139 S. Ct. 1853 (2018), the Supreme Court held that a government entity -- in that case, the U.S. Postal Service -- is not a "person" under the America...more
4/16/2020
/ America Invents Act ,
Appeals ,
Banks ,
Covered Business Method Proceedings ,
Federal Reserve ,
Government Agencies ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Return Mail Inc v United States Postal Service
2019 Patent Trial and Appeal Board Key Practice Updates: A Year in Review -
2019 has been an active year for procedural changes in the Patent Trial and Appeal Board (“PTAB”). These changes include not only the PTAB’s...more
Supreme Court Rejects USPTO's Attempt to Recover Attorney's Fees in All District Court "Appeals" from PTAB Decisions -
In Peter v. NantKwest, Inc., decided by the U.S. Supreme Court, the Court considered whether the U.S....more
A patent applicant dissatisfied with a decision by the USPTO’s Patent Trial and Appeal Board (“PTAB”) has two options for review of that decision. Most commonly—by far—the applicant can appeal the decision to the U.S. Court...more
When post-grant proceedings under the America Invents Act began, the USPTO's Patent Trial and Appeals Board ("PTAB") treated motions to amend in those proceedings like most other motions: the movant, here the patentee, bore...more
On the first day of the 2019-20 term, the Supreme Court heard oral argument in Peter v. NantKwest, Inc., a case raising the question of whether a patent applicant should be responsible to pay all of the PTO's attorneys' fees...more
In a 6-3 decision rendered earlier on June 10, 2019, the Supreme Court decided that federal agencies are not “persons” who can petition for post-issuance review of patents under the America Invents Act (AIA). Thus, the...more
AVX Corporation and Presidio Components are long-standing competitors in the market for electronic components, including capacitors. Their competition has caused animosity, which in turn has resulted in patent infringement...more
On the same day that the Supreme Court decided what the term "full costs" means under the Copyright Act, it granted certiorari to consider what "all the expenses of [a district court review] proceeding" means under the Patent...more
In AIA post-grant proceedings -- specifically, Post-Grant Review ("PGR"), Inter Partes Review ("IPR"), and Covered Business Method ("CBM") review -- the patentee has the right to seek to amend the claims rather than fight...more
Under a new PTO administrative rule published today, October 11, 2018, the PTAB will apply the same claim construction standards in IPRs, PGRs, and CBMs filed on November 13, 2018 or later as would apply in litigation. 83...more
En Banc Federal Circuit Finds § 145 Appellants Generally Will Not Be Liable for Patent Office's Attorneys' Fee -
The Federal Circuit handed down its en banc decision on Friday regarding the question of whether under 35...more
Earlier on November 7, 2017, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board ("PTAB") published its Final Rule establishing the attorney-client privilege for application in PTAB proceedings. Before the...more
Patent applicants dissatisfied with final outcome of patent prosecution proceedings have long had two options for court review of a Patent and Trademark Appeal Board decision: an appeal to the Federal Circuit under 35 U.S.C....more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/22/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Agent Privilege ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trademark Registration ,
Trademarks ,
USPTO
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings...more
In This Issue:
- Prior Art Redefined Under the AIA
- PTAB Holds a Firm Line on Additional Discovery
- The Art of Prior Art Searching
- Anticipating a Federal Trade Secret Law
- Trademark...more
11/26/2014
/ Additional Discovery ,
America Invents Act ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patentability Search ,
Patents ,
Prior Art ,
SCOTUS ,
Trade Secrets ,
USPTO