News & Analysis as of

Claim Construction International Trade Commission (ITC) United States Patent and Trademark Office

Jones Day

Applying Fintiv to a Parallel ITC Investigation

Jones Day on

The Patent Trial and Appeals Board (“PTAB”) recently denied institution of an inter partes review (“IPR”), exercising its discretion under 35 U.S.C. § 314(a)and Apple Inc. v. Fintiv Inc., IPR2020-00019 (PTAB Mar. 20, 2020)...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases: Actavis Labs. FL, Inc. v. United States

Actavis Labs. FL, Inc. v. United States, Appeal No. 2023-1320 (Fed. Cir. Mar. 21, 2025) Our Case of the Week, in the words of its author, Circuit Judge Stark, “is not actually a patent case. It is, instead, a tax case.” In...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2024 Federal Circuit IP Appeals: Summaries of Key 2024 Decisions

2024 brought exciting developments at the Federal Circuit. The court issued its first en banc decision in a patent case in five years in LKQ, which significantly altered the standard for proving obviousness of a design...more

Pillsbury Winthrop Shaw Pittman LLP

Navigating the PREVAIL Act: Key Impacts on Litigants as It Advances in the Senate

The PREVAIL Act is now subject to debate before the full Senate. The Act will require petitioners to certify standing, two new categories of which were recently added via a manager’s amendment....more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2022 Design Patents Year in Review: Analysis & Trends

Last year, in our inaugural issue of “The Year in Review,” we reported that since the landmark jury verdict in the IP litigation between Apple and Samsung in 2012, which awarded more than $1B to Apple for infringement of...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2021 PTAB Year in Review: Analysis & Trends

[co-author: Jamie Dohopolski] Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights: January 2022

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2021

[co-author: Jay Bober, Summer Associate] 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...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - May 2021

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2020 Decisions

[co-author: Kathleen Wills] Last year, the global COVID-19 pandemic created unprecedented challenges for American courts. By making several changes, however, the U.S. Court of Appeals for the Federal Circuit was able to...more

Womble Bond Dickinson

Proposed Alternative PTAB Discretionary Denial Factors In View of Co-Pending Parallel Litigation

Womble Bond Dickinson on

The authors propose replacing the PTAB’s current NHK-Fintiv factors with the alternative “Babcock-Train Factors” set forth herein These alternative factors have been crafted in an effort to provide clearer institution...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more

Jones Day

PTAB Determines Parallel ITC Record Did Not Create Tactical Advantage

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In a recent decision, the PTAB decided to institute inter partes review (“IPR”) of U.S. Patent No. 7,937,394 B2 despite Patent Owner’s claims that Petitioner engaged in gamesmanship and asserted references and combinations...more

Jones Day

ITC Rejects Sofa Design Patent Infringement On Prosecution History Estoppel Grounds

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While design patents follow many of the same rules as utility patents, the application of those rules in determining design patent infringement can be less than straightforward. But a recent Initial Determination by ALJ...more

Ward and Smith, P.A.

A Uniform Standard for Interpreting Claims

Ward and Smith, P.A. on

On October 11, 2018, the United States Patent and Trademark Office ("USPTO'') issued revised rules for claim construction. The rules will take effect on November 13, 2018. The new rules mandate that the claim...more

Knobbe Martens

PTAB Adopts Phillips Standard for Claim Construction in AIA Proceedings

Knobbe Martens on

On October 11, 2018, the USPTO published a Final Rule in the Federal Register, adopting a new standard for interpreting claims in trial proceedings before the patent trial and appeal board (PTAB)....more

Morgan Lewis

Standardized: USPTO Adopts Federal Court Phillips Claim Construction Standard at PTAB

Morgan Lewis on

In a final rule package recently published by the US Patent and Trademark Office, the agency conformed the standard for construing unexpired claims under certain Patent Trial and Appeal Board proceedings to the Phillips...more

Bradley Arant Boult Cummings LLP

Changes to PTAB’s Claim Construction Standard - Intellectual Property News

On October 10, 2018, the United States Patent and Trademark Office (USPTO) announced that it will issue a final rule changing the claim construction standard for interpreting claims in inter partes review (IPR), post-grant...more

WilmerHale

Federal Circuit Patent Updates - September 2018

WilmerHale on

Hyatt v. Pato (No. 2017-1722, 9/24/18) (Reyna, Wallach, Hughes) - Hughes, J. Reversing dismissal for lack of subject matter description stating, “the exclusive jurisdiction of this court and the Eastern Virginia district...more

Jones Day

After SAS, Indefinite Claims Can Be A Definite Problem For IPR Petitioners

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The definiteness requirement for patent claims is set forth in Section 112(b), mandating that a patent specification conclude with one or more claims “particularly pointing out and distinctly claiming subject matter which the...more

Parker Poe Adams & Bernstein LLP

New Proposal Would Create Consistent Standard Between USPTO and District Courts for Interpreting Patent Claims

On May 8, the United States Patent and Trademark Office (USPTO) announced a proposed change to how it will handle challenges to patents. In essence, the proposal would result in a consistent claim construction standard...more

Knobbe Martens

USPTO Proposes Phillips-Type Claim Construction For Post Grant Proceedings at the PTAB

Knobbe Martens on

The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard...more

Jones Day

Proposed Rule: No More BRI in PTAB Trials

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Today, the USPTO issued a press release announcing a Notice of Proposed Rulemaking for Claim Construction Standards used in PTAB Proceedings. The rule proposed by the Office would change the prior policy of using the Broadest...more

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