As we previously covered, on October 31, 2019, the Federal Circuit held in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320, that PTAB judges (i.e., administrative patent judges, or APJs) were principal officers appointed...more
To wrap up 2019 and usher in 2020 for practitioners who handle Patent Trial and Appeal Board (PTAB) matters, Foley partners Jeanne Gills, Steve Maebius, and George Quillin discussed 2019’s major developments in a webinar on...more
1/23/2020
/ America Invents Act ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
PTAB Precedential Opinion Panel (POP) ,
Real Party in Interest ,
USPTO
With the Supreme Court in Oil States v. Greene’s Energy holding IPRs constitutional under Article III, and the Federal Circuit in Celgene v. Peter holding the retroactive use of IPRs against pre-AIA patents not to be an...more
11/4/2019
/ America Invents Act ,
Appointments Clause ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Takings Clause ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO
Practitioners are familiar with the typical submission process in America Invents Act (“AIA”) – Patent Trial and Appeals Board (“PTAB”) proceedings. First, the Petition is filed, and then the Patent Owner may submit a Patent...more
In a quartet of recent decisions, the Federal Circuit has confirmed that SAS Institute extends beyond mandating the inclusion of all claims when trial is instituted, and extends to all grounds as well. These decisions confirm...more
As explained in a prior client alert, two weeks ago the Supreme Court issued its decision in SAS Institute v. Iancu holding that “[w]hen the Patent Office institutes an inter partes review, it must decide the patentability of...more
5/10/2018
/ Administrative Procedure ,
America Invents Act ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
New Guidance ,
Partial Institution ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
On April 24, 2018, the Supreme Court issued its opinion in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712, affirming the constitutionality of the U.S. Patent and Trademark Office’s (PTO) inter...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Public Rights Doctrine ,
SCOTUS ,
Seventh Amendment ,
USPTO
On April 24, 2018, the Supreme Court issued its opinion in SAS Institute Inc. v. Iancu, No. 16-969, holding that when the U. S. Patent and Trademark Office (PTO) institutes an inter partes review (IPR), it must decide the...more
4/26/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
In a rare grant of a petition for rehearing en banc, the court decided that an appeal “warrants en banc consideration” of who bears what burden when amending in an IPR. In re: Aqua Products, No. 15-1177, slip op. at 2 (Fed....more
8/16/2016
/ America Invents Act ,
Appeals ,
Burden of Proof ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition For Rehearing
Several of our recent posts have discussed petitioners’ use of priority denial to attack patents with intervening prior art, but the issue of adequate support in an earlier filed application may also work in reverse against...more
This post was co-authored by Foley & Lardner Summer Associate Jonathan E. Robe.
Ever wonder how long it takes the PTAB to decide to institute trial? Ever have someone ask how long it will take for the Board to issue its...more
Today in In re Cuozzo Speed Technologies, LLC, No. 14-1301, a majority (Judges Dyk and Clevenger) affirmed the Patent Trial and Appeal Board’s (PTAB) decision to deem certain claims of a speed limit indicator patent...more