When the PTAB Attacks! -
In the past few years, the public's perception of the patent system in the United States has been at a low point. One of the causes of this lack of confidence in the system has been the increase...more
The U.S. Patent and Trademark Office published a notice of proposed Rulemaking in the Federal Register (83 Fed. Reg. 21221) today, May 9, 2018, which would provide a change to the claim construction standard used in Inter...more
The U.S. Patent and Trademark Office appears to have taken the position that neither party has the burden of persuasion with regard to Motions to Amend after the Aqua Products v. Matal en banc decision. It was unclear,...more
Fair Use and Social Media Sites like BuzzFeed -
Fair use, an evolving doctrine and a very popular fallback for those on the Internet, has continued to be “the most troublesome in the whole law of copyright.” Its goal has...more
We recently noted that the U.S. Patent and Trademark Office appears to have taken the position that neither party has the burden of persuasion with regard to Motions to Amend after the Aqua Products v. Matal decision. ...more
Pharmaceutical patent owners have been one of the more vocal groups decrying the creation and existence of inter partes reviews and other PTAB post-issuance proceedings. And for good reason. Congress enacted the...more
In 2011, Congress enacted the America Invents Act and created new mechanisms to challenge issued claims at the Patent Office. The goal was to expeditiously resolve issues of patent validity in response to the public outcry...more
Last year, the Federal Circuit decided the Aqua Products, Inc. v. Matal case en banc in what could be considered the epitome of a fractured decision. After 148 pages and five separate opinions, the only agreed-to result...more
On January 12, 2018, the U.S. Patent and Trademark Office's Patent Trial and Appeal Board announced that it had updated its Motion to Amend Study to include all AIA trials through the end of Fiscal Year 2017 (which ended on...more
In November, Chief Judge David P. Ruschke of the U.S. Patent and Trademark Office's Patent Trial and Appeal Board issued a memorandum entitled "Guidance on Motions to Amend in view of Aqua Products" (see "PTAB Motions to...more
On Monday, January 8, 2018, the en banc Federal Circuit held in Wi-Fi One, LLC v. Broadcom Corp. that PTAB time-bar determinations under 35 U.S.C. § 315(b) are appealable because they do not fall within the scope of the...more
On November 21, 2017, PTAB Chief Judge Ruschke issued a memorandum entitled "Guidance on Motions to Amend in view of Aqua Products." As we reported at the time, the Federal Circuit in Aqua Products determined that the PTAB...more
Earlier this month, the Patent Trial and Appeal Board released it Standard Operating Procedure 9 entitled "Procedure for Decisions Remanded from the Federal Circuit for Further Proceedings." To date, the Federal Circuit has...more
On November 27, 2017, the Supreme Court will hear arguments in two cases that were ultimately appealed from IPR Final Written Decisions issued by the PTAB. The first of these, Oil States Energy Services, LLC v. Greene's...more
More Than a Mere Academic Exercise -
On October 4, 2017, in Aqua Products, Inc. v. Matal, a highly fractured en banc Federal Circuit determined that the PTAB can no longer place the burden of establishing the patentability...more
Can a prior art reference that does not contain a teaching sufficient enough to allow it to be used in an obviousness combination nevertheless be used as a background reference for evidence of motivation to combine? ...more
On March 31, 2017, the Patent Trial and Appeals Board ("PTAB" or "Board") granted a motion to amend claims in Amerigen Pharmaceuticals Ltd. v. Shire LLC (IPR2015-02009). This is, of course, an uncommon event. Depending on...more
In inter partes review proceedings, is the U.S. Patent and Trademark Office's Patent Trial and Appeal Board required to take into account a final district court determination of non-obviousness of the same claims based on the...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/22/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Agent Privilege ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trademark Registration ,
Trademarks ,
USPTO
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/16/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Prior Art
Can any petitioner appeal a Board's final written decision from an inter partes review or post grant review proceeding? Contrary to the language of 35 U.S.C. § 141(c) which permits any party "who is dissatisfied with" the...more
"It appears to me that en banc consideration is warranted." -- Judge Taranto (concurring in Click-To-Call Technologies, LP v. Oracle Corp.).
"I write separately, however, to note that I believe the Supreme Court's...more
On Friday, December 9, 2016, the Federal Circuit will hear oral arguments en banc in the In re Aqua Products, Inc. case to consider two questions related to the PTAB's treatment of Motions to Amend in IPR proceedings. ...more
The Federal Circuit remanded a final written decision of the Patent Trial and Appeal Board ("PTAB" or "Board") because the Board invalidated certain claims in a patent without providing adequate notice or opportunity to the...more
When Congress created the post-issuance proceedings before the Patent Trial and Appeal Board as part of the Leahy-Smith America Invents Act ("AIA"), it did so with the recognition that they would be adjudicatory in nature. ...more