In a recent opinion, the Federal Circuit added several new wrinkles to amendment practice in inter partes review proceedings. The court affirmed the Patent Trial and Appeal Board’s determination that most of the original...more
In Dragon Intellectual Property LLC v. DISH Network LLC, the US Court of Appeals for the Federal Circuit addressed an “exceptional” set of circumstances concerning the recovery of attorney fees in district court litigation...more
The US Court of Appeals for the Federal Circuit in Purdue Pharma L.P. v. Collegium Pharm. Inc. addressed a unique situation in November 2023 whereby the Patent Trial and Appeal Board failed to issue its Final Written Decision...more
The US Patent and Trademark Office (USPTO) published an Advance Notice of Proposed Rulemaking (ANPRM) on April 20 seeking comments on proposed changes to America Invents Act trial proceedings before the Patent Trial and...more
A recent Federal Circuit opinion clarified that patent owners carry the burden of proving that inter partes review (IPR) estoppel applies to invalidity grounds not included in their IPR petitions. The Federal Circuit also...more
US Patent and Trademark Office (USPTO) Director Katherine K. Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB or Board) in IPR2020-01234, which granted rehearing and modified the...more
Director of the US Patent and Trademark Office (USPTO) Kathi Vidal recently designated as precedential a decision by the Patent Trial and Appeal Board (PTAB) rejecting the petitioner’s invalidity challenge, since it was based...more
The US Court of Appeals for the Federal Circuit recently held that the Patent Trial and Appeal Board correctly considered evidence of multiple witnesses to be sufficient in corroborating actual reduction to practice when...more
Heading into 2023, Asia’s tech scene is well-positioned for strong growth potential. As with any industry where advancement and innovation are outpacing regulation, the complex landscape can be difficult for businesses to...more
11/1/2022
/ Asia ,
CFIUS ,
Data Privacy ,
Digital Assets ,
Due Diligence ,
Environmental Social & Governance (ESG) ,
FinTech ,
Mergers ,
Metaverse ,
National Security ,
Patent Litigation ,
Popular ,
Startups ,
Virtual Reality
The PTAB Digest 2021/2022 provides an overview of PTAB statistics, trends, and updates that impact strategies and business decisions for patent owners and petitioners alike.
Significant developments included the...more
The Patent Trial and Appeal Board recently granted the institution of an inter partes review in Samsung Electronics Co. v. Staton Techiya, LLC, despite the existence of a parallel proceeding in the US District Court for the...more
The USPTO has issued interim procedures curbing the PTAB’s discretionary denials over post-grant proceedings associated with parallel ITC proceedings or district court litigation. ...more
The Patent Trial and Appeal Board found in a recent inter partes review—DraftKings Inc. v. Interactive Games LLC—that DraftKings’ proposed combination of prior art would have been obvious when Interactive Games’ mobile...more
In Alarm.com Inc. v. Hirshfeld, the US Court of Appeals for the Federal Circuit ruled that decisions by the US Patent and Trademark Office Director vacating ex parte reexamination based on estoppel may be subject to judicial...more
The US Patent and Trademark Office is implementing a pilot program to allow participating applicants to defer responding to subject matter eligibility rejections until the earlier of a final disposition of the application, or...more
The US Patent Trial and Appeal Board on December 23, 2021, instituted an inter partes review even though an unrelated party had already unsuccessfully challenged the validity of the patent in district court. In the decision...more
The US Supreme Court has granted certiorari in three cases relating to the US Court of Appeals for the Federal Circuit’s controversial October 2019 decision in Arthrex, Inc. v. Smith & Nephew, Inc. In Arthrex, the Federal...more
10/19/2020
/ 5 U.S.C. § 7513(a) ,
Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Constitutional Challenges ,
Director of the USPTO ,
Inferior Officers ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Polaris Innovations Ltd v Kingston Technology Co ,
Principle Officers ,
SCOTUS ,
Severability Doctrine ,
Tenure ,
United States v Arthrex Inc
In a recent opinion in ESIP Series 2, LLC v. Puzhen Life USA, LLC, the US Court of Appeals for the Federal Circuit determined that 35 USC 314(d), which bars appellate review of US Patent and Trademark Office decisions to...more
The decision by the Patent Trial and Appeal Board illustrates the dangers in waiting until the last day of the one-year statutory bar to file a petition, and the importance of double checking the filed documents on the PTAB’s...more
In a welcome ruling for internet companies undergoing patent infringement suits, the US Court of Appeals for the Federal Circuit weighed in regarding what it means to have a “regular and established place of business” under...more
The US Court of Appeals for the Federal Circuit recently held that the statutory scheme governing the administrative patent judges of the Patent Trial and Appeal Board is in violation of the Appointments Clause of the US...more
The decision of the US Court of Appeals for the Federal Circuit in Aatrix Software, Inc. v. Green Shades Software, Inc. clarified that although Section 101 of the US Patent Act is ultimately a question of law, it may involve...more
A recent expanded panel decision, which lists factors the PTAB will use in exercising its discretion to institute serial IPR petitions, is afforded an “informative” designation....more
Sovereign immunity is being invoked in an effort to halt inter partes reviews.
In two separate opinions earlier this year, the Patent Trial and Appeal Board (PTAB) held that an inter partes review (IPR) proceeding is a...more
The Federal Circuit recently held that the Patent Trial and Appeal Board is not constrained by parties’ proposed constructions and may, in fact, adopt an alternative construction that the Board raises for the first time at...more