News & Analysis as of

Inter Partes Review (IPR) Proceeding International Trade Commission (ITC) Claim Construction

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

Fish & Richardson

ITC Round-Up: Q1 2025

Fish & Richardson on

The first quarter of 2025 saw the International Trade Commission issue the following public orders addressing a wide variety of issues ranging from evaluation of significance for domestic industry to staying remedial orders...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

Alston & Bird

Patent Case Summaries | Week Ending February 7, 2025

Alston & Bird on

HD Silicon Solutions LLC v. Microchip Technology, Inc., No. 2023-1397 (Fed. Cir. (PTAB) Feb. 6, 2025). Opinion by Lourie, joined by Stoll and Cunningham....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

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - April 2023

Roku, Inc. v. Universal Electronics, Inc., Appeal No. 2022-1058 (Fed. Cir. Mar. 31, 2023) In this week’s Case of the Week, the Federal Circuit affirmed the U.S. Patent Trial and Appeal Board’s (PTAB’s) final written...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: Qualcomm Inc. v. Intel Corp., 6 F.4th 1256 (Fed....

Intel Corp. petitioned for six inter partes reviews (IPRs) challenging the validity of U.S. Patent No. 9,608,675, a patent directed to power management in wireless devices. In each proceeding, Intel and patent-owner Qualcomm...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 - 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

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

BakerHostetler

[Webinar] Patent Law: 2019 Year End Review (and 2020 Preview) - February 26th, 12:00 pm ET

BakerHostetler on

This timely and fast-moving webinar provides insight for business leaders and legal counsel, highlighting many of the significant holdings by the Supreme Court and Federal Circuit in patent cases in 2019 and what issues are...more

Jones Day

PTAB Determines Parallel ITC Record Did Not Create Tactical Advantage

Jones Day on

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

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

Mintz - Intellectual Property Viewpoints

PTAB Adopts the Phillips Claim Construction Standard in AIA Proceedings

Today the Patent Trial and Appeal Board announced a final rule changing the claim construction standard for interpreting claims in inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patent...more

Bass, Berry & Sims PLC

New PTAB Rule Impacts Patent Challengers

Bass, Berry & Sims PLC on

PTAB Patent Challengers Beware: Starting November 13, 2018, winning may be a little more difficult - According to a rule published yesterday by the U.S. Patent & Trademark Office (USPTO), the Patent Trial and Appeal Board...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

Jones Day on

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

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

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