News & Analysis as of

Patent Trial and Appeal Board Due Process

Morgan Lewis

‘Settled Expectations,’ PTAB’s New Discretionary Denial Factor, Gains Additional Footing in Dabico

Morgan Lewis on

Acting Director of the USPTO Coke Morgan Stewart recently discretionarily denied institution of an inter partes review (IPR) based on a new consideration, “settled expectations,” that is, the length of time that the...more

WilmerHale

Federal Circuit Patent Watch: Federal Circuit Grants En Banc Review of Design Patent Obviousness

WilmerHale on

Precedential Federal Circuit Opinions - MEDYTOX, INC. v. GALDERMA S.A. [OPINION] (2022-1165, 6/27/2023) (Dyk, Reyna, and Stark) - Reyna, J. The Court affirmed a decision by the PTAB in a post-grant review denying an...more

Goodwin

Issue 40: PTAB Trial Tracker

Goodwin on

Precedential Opinion Addresses Conclusory Expert Declarations - In a precedential opinion in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022), the Board denied institution of an inter partes...more

McDermott Will & Emery

PTO Can and Should Use Alice/Mayo Framework to Assess Eligibility

Addressing a challenge of the Alice/Mayo framework in the context of the Administrative Procedure Act (APA) and the Fifth Amendment’s due process clause, the US Court of Appeals for the Federal Circuit affirmed a Patent Trial...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: Mylan Labs. Ltd v. Janssen Pharmaceutica, N.V.,...

Mylan appealed from a Patent Trial and Appeal Board (Board) discretionary denial of institution of an inter partes review (IPR) proceeding. The Board declined to institute Mylan’s IPR under NHK-Fintiv, a multi-factor analysis...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

Haug Partners LLP

The Federal Circuit holds that the Structure of the PTAB is Constitutional

Haug Partners LLP on

Is the Patent Trial and Appeal Board (“Board”) constitutional? This was a question asked by Mobility Workx in Mobility Workx, LLC v. Unified Patents, LLC, 2021-1441, 2021 WL 4762265 (Fed. Cir. 2021). Mobility Workx raised...more

Fitch, Even, Tabin & Flannery LLP

PTAB’s Structure and Funding Pass Due Process Muster

On October 13, in Mobility Workx v. Unified Patents, LLC, the Federal Circuit rejected a series of due process challenges to the structure of the Patent Trial and Appeal Board (PTAB), leaving the PTAB to continue with...more

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

PTAB Strategies and Insights - October 2021: Potential Pecuniary Interest In Instituting More AIA Proceedings Not Enough To...

We previously published an article discussing patent owner’s due process challenges based on alleged pecuniary interests of the Office and Administrative Patent Judges instituting cases to meet production goals and increase...more

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

PTAB Strategies and Insights - October 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

Jones Day

Fed. Cir. Rejects New IPR Constitutional Challenges

Jones Day on

In Mobility Workx, LLC v. Unified Patents, LLC, the Federal Circuit in a split decision concluded that Mobility Workx, LLC’s constitutional challenges to structure and funding of the Patent Trial and Appeal Board (“PTAB”) are...more

Knobbe Martens

Federal Circuit Holds That the PTAB Does Not Have an Impermissible Incentive to Institute IPRs

Knobbe Martens on

MOBILITY WORKX, LLC v. UNIFIED PATENTS, LLC Before Newman, Schall, and Dyk. Appeal from the Patent Trial and Appeal Board. Summary: Fee-funded structure of AIA review proceedings does not violate due process....more

McDermott Will & Emery

As Due Process Recognizes, it’s Hard to Shoot at a Moving Claim Construction Target

The US Court of Appeals for the Federal Circuit vacated several Patent Trial & Appeal Board (PTAB) decisions as violating due process and the Administrative Procedure Act (APA), referencing the parties’ inability to respond...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - August 2021

Qualcomm Inc. v. Intel Corp., Appeal Nos. 2020-1589, et al. (Fed. Cir. July 27, 2021)‎ - In the only precedential patent decision issued by the Federal Circuit this week, the Court addressed ‎again the due process and...more

Morgan Lewis

Government Arguments Potentially Open Constitutional Can of Worms Regarding PTAB Appointments

Morgan Lewis on

In response to arguments made by the US government in an appeal pending before the US Supreme Court, members of Congress requested an investigation into the adequacy of due process afforded to Patent Trial and Appeal Board...more

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

PTAB Strategies and Insights - March 2021: Is The Sliver of Light a Door Opening or Closing?

From the beginning of AIA proceedings, Petitioners that have lost at institution decision phase have tried using Mandamus to circumvent the statutory lack of appeal from institution decisions. Mylan Laboratories Ltd. v....more

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

PTAB Strategies and Insights - March 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

Foley & Lardner LLP

Reading Arthrex’s Tea Leaves – Three Exchanges at the Oral Argument That May Hint at the Fate of Patent Judges

Foley & Lardner LLP on

The oral argument in the combined Arthrex cases was held on March 1, 2021. While the parties argued what they considered to be the key issues in their merits briefing, the oral argument provided insight into how the justices...more

McDonnell Boehnen Hulbert & Berghoff LLP

Appellants Raise Due Process Issues in New Vision Gaming and Development v. SG Gaming

Ever since institution of the post-grant review proceedings enacted under the Leahy-Smith America Invents Act were implemented by the U.S. Patent and Trademark Office (through the newly constituted Patent Trial and Appeal...more

McDermott Will & Emery

No Estoppel in the Name of Different Interests and Claims

McDermott Will & Emery on

The US Court of Appeals for the Federal Circuit found that 35 USC § 314(d) did not bar its review of a Patent Trial & Appeal Board determination that a petitioner was not estopped from maintaining inter partes review (IPR)...more

Morrison & Foerster LLP - Federal Circuitry

Order of Interest – Can You Challenge The Denial Of Institution Without Showing A Deprivation Of Life, Liberty, Or Property?

Originating tribunal: Patent Trial and Appeal Board - Date: March 12, 2021 - Panel: Judges Newman, Moore, and Stoll, with Judge Moore writing the precedential order - Result: Appeal dismissed, and mandamus...more

Knobbe Martens

Federal Circuit Cannot Review Denial of Institution of IPR, Unless Extraordinary Circumstances Are Shown

Knobbe Martens on

MYLAN LABS. LTD. v. JANSSEN PHARMACEUTICA, N.V. Before Newman, Moore, and Stoll. Appeal from the Patent Trial and Appeal Board. Summary: The Federal Circuit lacks jurisdiction over appeals from decisions denying...more

McDonnell Boehnen Hulbert & Berghoff LLP

U.S. v. Arthrex: Supreme Court Oral Argument

The Supreme Court heard argument on Monday in U.S. v. Arthrex, involving the question of whether appointment of Administrative Patent Judges (APJs) and their authority under the Leahy-Smith America Invents Act violates the...more

Foley & Lardner LLP

In Arthrex Reply Brief, Government Reiterates and Stands Firm

Foley & Lardner LLP on

Smith & Nephew and the United States filed their reply briefs on January 22. In its reply brief, the United States rebuts many of the positions taken by Arthrex in its initial merits brief. While Smith & Nephew, in its reply,...more

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