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
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
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
On July 6th and 7th, the USPTO made good on its promise to not wait for a confirmed director to begin Arthrex Director reviews, issuing its first denials of review requests. The full press release is below:...more
8/3/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Covered Business Method Patents ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SCOTUS ,
Sua Sponte ,
United States v Arthrex Inc ,
USPTO
The Federal Circuit’s recent decision in Microsoft Corporation v. FG SRC, LLC, No. 2020-1928 (Fed. Cir. June 17, 2021), is a stark reminder that an IPR petitioner must always set forth its grounds in its petition with...more
On July 20th, the PTAB provided additional clarifications regarding its views on Arthrex and how its interim procedures for requesting Director review will work for cases receiving Final Written Decisions on a going forward...more
7/22/2021
/ 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
The United States Supreme Court has delivered its decision in U.S. v. Arthrex, which determined whether appointments of administrative patent judges to the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board...more
7/20/2021
/ 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
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
In its July 1st Boardside Chat, the PTAB discussed the Supreme Court’s recent Arthrex decision and the interim procedure for Director review. The panel included Drew Hirschfeld (Performing the functions and duties of the...more
7/7/2021
/ 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
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
On June 21, 2021, the Supreme Court issued its decision in Arthex stating: Today, we reaffirm and apply the rule from Edmond that the exercise of executive power by inferior officers must at some level be subject to the...more
Petitioner (Apple, Inc.) filed a petition to institute inter partes on a patent owned by Koss Corporation (Patent Owner). The PTAB considered six factors from Fintiv to assess whether to exercise authority to deny...more
In Fantasia Trading LLC v. Cognipower LLC, IPR2021-00070, Paper 21 (May 20, 2021), the Patent Trial and Appeal Board (PTAB) declined to institute inter partes review (IPR) where Petitioner Fantasia Trading LLC failed to...more
An inter partes review (IPR) before the Patent Trial and Appeal Board (PTAB) is a proceeding of the petitioner versus the patent owner. In a situation where the petitioner or the patent owner consists of multiple entities,...more
On April 30, 2021, the PTAB instituted IPR trials based on petitions by Facebook, Inc. (“Petitioner”) challenging certain claims of U.S. Patent No. 8,645,300 (“300 Patent”), owned by USC IP Partnership, L.P. (“Patent Owner”)...more
Although the Federal Circuit had previously held that the PTAB may enter adverse judgment when a patent owner disclaims all claims challenged in an inter partes review (“IPR”) petition before an institution decision, in...more
An April 13, 2021 decision by the Federal Circuit denied a motion to vacate and remand PTAB decisions based on the Federal Circuit’s October 2019 decision in Arthrex v. Smith & Newman, Inc., et al., 941 F.3d 1320 (Fed. Cir....more
The institution rate for post-grant challenges in current FY 2021 (Oct. 1, 2020 through Feb. 28, 2021) stands at 61% (305 instituted, 198 denied) compared to 56% in the previous fiscal year. This rate is more consistent...more
This blog has previously discussed the effect of several different types of estoppel. See, e.g., Estoppel Estopped for Remanded Claims, Reminder: Estoppel May Not Preclude Prior-Art Systems, and PGR Estoppel Applies to...more
The PTAB exercised its discretion in Samsung Electronics Co., Ltd., v. Acorn Semi, LLC, IPR2020-01182, Paper 17 (Feb. 10, 2021) to deny inter partes review based on a district court finding the challenged claims indefinite....more
Partners Matt Johnson and Sarah Geers talk about former USPTO Director Andrei Iancu's impact on the PTAB, and what we might expect from a new director under the Biden Administration. They also comment on why patent litigation...more
The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...more
On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials....more