The statistics from the PTAB for FY2021 are in, and the total PTAB petitions filed in FY2021 are down a bit from the previous year. A total of 1,401 petitions were filed—IPR (1308) and PGR (93)—compared to 1513 in FY2020,...more
In an inter partes review (IPR), the scope of discovery is expressly stated in the C.F.R. and additional discovery must either be agreed upon by the parties or granted by the Board when it “is necessary in the interest of...more
On October 26, 2021, Chief Administrative Patent Judge (“APJ”) Boalick lifted a May 1, 2020 stay issued by the PTAB pending the Supreme Court’s consideration of Arthrex in which 103 cases were placed in “administrative...more
11/11/2021
/ Administrative Law Judge (ALJ) ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
Stays ,
Vacated
Introducing evidence in a motion to file a reply to a patent owner’s preliminary response without the PTAB’s authorization may result in denial and expungement. A recent motion met such a fate in Ice Castles, LLC v....more
Patent Owner (Provisur Technologies) requested authorization to file a motion to strike portions of Petitioner’s (Weber, Inc.) Reply and certain evidence submitted therewith, which Petitioner opposed. Patent Owner argued...more
On October 26, 2021, President Biden nominated Kathi Vidal – the managing partner of Winston and Strawn’s Silicon Valley office – as Director of the United States Patent and Trademark Office (USPTO). ...more
Rule 42.23(b) is clear, “A sur-reply may only respond to arguments raised in the corresponding reply and may not be accompanied by new evidence other than deposition transcripts of the cross-examination of any reply...more
We recently reported on bipartisan legislation introduced by Senators Patrick Leahy (D) and John Cornyn (R) to significantly revamp certain features of the America Invents Act (AIA), ten years after its debut. This proposed...more
10/22/2021
/ America Invents Act ,
Estoppel ,
Injury-in-Fact ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
Regulatory Agenda ,
Regulatory Reform ,
Regulatory Standards ,
Standing ,
USPTO
The institution rate for post-grant petitions in FY 2021 through the end of August 2021 (Oct. 1, 2020 through Aug. 31, 2021) stands at 58% (658 instituted, 471 denied) compared to 56% in the previous fiscal year. The Patent...more
Trade Secrets in the HAV Industry Trade secrets are invaluable in the HAV industry as its growth accelerates in the fast lane. HAV players defend their technology aggressively against competitors and departing employees who...more
9/8/2021
/ Automation Systems ,
Automotive Industry ,
Confidential Information ,
Connected Cars ,
Driverless Cars ,
Intellectual Property Protection ,
Motor Vehicles ,
NHTSA ,
Proprietary Information ,
Regulatory Standards ,
Reporting Requirements ,
Safety Standards ,
Trade Secrets
The PTAB’s Standard Operating Procedure 2 permits the public to submit nominations for PTAB decisions that an individual believes should be designated as precedential or informative, or to suggest that a decision previously...more
Ocado Group (“Petitioner”) filed a petition requesting a post-grant review of a claim from U.S. Patent No. 10,696,478 (’478 Patent) owned by AutoStore Technology (“Patent Owner”). The Board concluded that the Petitioner did...more
When filing an IPR, petitioners should be careful not to take for granted one of the most fundamental aspects of challenging validity in this forum: Whether or not the relied upon references qualify as prior art. Pursuant to...more
Australia's Copyright Act allows for various "fair dealing" defenses that set out defined categories of acceptable uses of copyrighted work. These uses include research or study, criticism or review, parody or satire,...more
7/28/2021
/ Australia ,
Climate Change ,
Copyright ,
Copyright Infringement ,
Corporate Counsel ,
Fair Dealing Exception ,
Greenpeace ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Logos ,
Oil & Gas ,
Renewable Energy ,
The Copyright Act ,
Trademark Infringement ,
Trademarks
This blog has previously discussed the Federal Circuit’s decision in Becton, Dickinson and Co. v. Baxter Corp. Englewood, — F.3d —, No. 2020-1937, 2021 WL 2176796 (Fed. Cir. May 28, 2021). See Telepharma Disconnect: Federal...more
A Sotera-style stipulation has once again convinced the PTAB to not exercise its discretion to deny institution of inter partes review (“IPR”) under 35 U.S.C. § 314(a). In Ocado Group PLC v. AutoStore Technology AS,...more
On June 29th, the PTO issued an initial protocol for requesting Director review of a PTAB Final Written Decision according to the Supreme Court’s Arthrex decision. This Arthrex protocol is similar to the current procedure...more
6/30/2021
/ Administrative Patent Judges ,
Administrative Review ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Interim Measures ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
AI is becoming ubiquitous across all industries. AI systems and services are embedded in everyday products and services, including Amazon's Alexa, Netflix streaming services, and Nest smart thermostats. AI systems are also...more
“Printed publication” under 35 U.S.C. § 102(b) is typically construed to encompass any type of document, as long as the document is “publicly accessible.” See, e.g., Medtronic, Inc. v. Barry, 891 F.3d 1368 (Fed. Cir. 2018)....more
The Situation: Artificial intelligence ("AI") is being used to develop new inventions without human aid. As AI capabilities increase, patent offices around the globe are being confronted with difficult questions about whether...more
The emergence of artificial intelligence-related technology as a means of innovation has led to uncertainties for companies across industries, primarily because U.S. patent law has historically held that intellectual property...more
4/20/2020
/ Artificial Intelligence ,
Computer-Related Inventions ,
Copyright ,
Innovation ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventors ,
Patents ,
Popular ,
Trade Secrets ,
Trademarks ,
USPTO
Our previous blog post on NHK Spring Co. v. Intri-Plex Techs., Inc., No. IPR2018-00752, Paper 8 (PTAB Sept. 12, 2018) (precedential), noted the PTAB’s exercise of its § 314(a) discretion to deny IPR institution, despite the...more
Jones Day's Dave Cochran and Matt Johnson discuss recent developments in patent litigation and appeals, including the continuing importance of the PTAB as a jurisdiction of first choice for patent disputes in the United...more
Mylan Pharmaceuticals, Inc. petitioned for inter partes review (IPR) of U.S. Patent No. 6,858,650 (the “‘650 Patent”), which is owned by UCB Pharma GmbH (“UCB”) and is directed to chemical derivatives of a drug for treating...more
2/1/2019
/ Abbreviated New Drug Application (ANDA) ,
Article III ,
Hatch-Waxman ,
Intellectual Property Protection ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Prescription Drugs ,
Standing
On November 27th, Acting Deputy Chief Administrative Patent Judge Jacqueline Bonilla presented a webinar on the PTAB’s proposed Motion to Amend pilot program. In October 2018, the Patent Office published a request for...more