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United States Patent and Trademark Office › America Invents Act › Burden of Proof

The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.... more +
The U.S. Patent and Trademark Office is an agency of the United States Department of Commerce that serves a fundamental role in the U.S. intellectual property system by issuing patents and registering trademarks.    less -
Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Issues First Decision on Litigated AIA Derivation Proceeding

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

In Global Health Solutions LLC v. Selner, the Federal Circuit addressed for the first time an appeal from a derivation proceeding litigated before the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA)....more

Rothwell, Figg, Ernst & Manbeck, P.C.

The PREVAIL Act Could Change PTAB Trials in a Big Way

Rothwell, Figg, Ernst & Manbeck, P.C. on

Since the America Invents Act (“AIA”) established a new venue for hearing patent disputes, the Patent Trial and Appeal Board (“PTAB”), much ink has been spilled regarding the impacts of this forum on patent litigation and the...more

Haug Partners LLP

The Many Flavors of Inter Partes Review Estoppel: A Review and Update

Haug Partners LLP on

I. Introduction - The Leahy-Smith America Invents Act (“AIA”) was years in the making.  From the first patent reform bill introduced by Representative Lamar Smith in June 20052 until the final House and Senate debates in...more

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

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

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

[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

Morgan Lewis

USPTO Codifies Burden of Persuasion Rules for AIA Amendments at the PTAB

Morgan Lewis on

It has been argued that the Patent Trial and Appeal Board (PTAB or Board) cannot engage in rulemaking through decisions made by its administrative patent judges (APJs), even if those decisions are made precedential, as APJs...more

McDonnell Boehnen Hulbert & Berghoff LLP

USPTO Issues Proposed Rules on Burden of Proof for Motions to Amend in Post-Grant Proceedings

McDonnell Boehnen Hulbert & Berghoff LLP on

When post-grant proceedings under the America Invents Act began, the USPTO's Patent Trial and Appeals Board ("PTAB") treated motions to amend in those proceedings like most other motions:  the movant, here the patentee, bore...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Upholds Trade Show Catalog As Prior Art in Nobel Biocare Servs. AG v. Instradent USA, Inc.

Mintz - Intellectual Property Viewpoints on

Recently in Nobel Biocare Services AG v. Instradent USA, Inc., the Federal Circuit affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (“the Board”) in an inter partes review (“IPR”)...more

McDermott Will & Schulte

PTO Proposes Changes to Claim Construction Standard, Guidelines for Analyzing Burden of Proof and Subject Matter Eligibility

McDermott Will & Schulte on

The US Patent and Trademark Office (PTO) proposed changing the standard for claim construction in America Invents Act post-grant proceedings from the broadest reasonable interpretation (BRI) to the Phillips v. AWH Corp....more

Hogan Lovells

Federal Circuit Shifts Burden of Proof for Amendments in Post-Grant Proceedings

Hogan Lovells on

On October 4, 2017, the Federal Circuit, sitting en banc, issued a ruling in Aqua Products, Inc. v. Matal, placing the burden of persuasion on the petitioner to prove the invalidity of amended claims in post-grant...more

McDermott Will & Schulte

Federal Circuit Rebukes PTAB for Shifting Burden of Proof to Patentee in IPR

McDermott Will & Schulte on

Reaffirming the petitioner’s burden of proof codified in 35 USC § 316(e), the US Court of Appeals for the Federal Circuit reversed the decision of the Patent Trial and Appeal Board (PTAB or Board) finding the patent owner’s...more

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