In a 2-1 split decision on Wednesday, July 22, 2020, the Federal Circuit confirmed that the Patent Trial and Appeal Board (“PTAB“) had the authority to reject substitute claims under 35 U.S.C. §§ 101 and 112, statutory...more
In a Halloween decision, the Federal Circuit issued its opinion in Arthrex, Inc. v. Smith & Nephew, Inc. et al., an appeal from IPR2017-00275....more
B.E. Technology LLC v. Facebook, Inc., Appeal No. 18-2356 (Fed. Cir. Oct. 9, 2019) identifies what it means to win in a case. More particularly, the Federal Circuit explained how to determine whether a party is “the...more
On April 15, 2019, the Supreme Court of the United States denied the petition for certiorari filed by the St. Regis Mohawk Tribe....more
Tuesday, April 24, 2018, proved to be a banner day for inter partes review (“IPR”) proceedings. The United States Supreme Court issued two separate opinions addressing the regime, the first upholding the constitutionality of...more
In August of 2016, the Federal Circuit granted Aqua Products, Inc.’s (“Aqua Products”) petition for rehearing en banc on the issue of whether the patent owner bears the burden of persuasion of patentability when amending...more
The Federal Circuit on May 11, 2017, addressing the question for the first time, held that statements made by a patent owner during inter partes review (“IPR”) proceedings before the Patent Trial and Appeal Board (“PTAB”) can...more
On January 11, Judge Sue L. Robinson issued her final decision on statutory estoppel in district court post-inter partes review (“IPR”) proceeding, confirming her decision on summary judgement of invalidity and cross motion...more
The Federal Circuit’s recent decision in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., addressed the effect of the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), on the issue...more
Post Grant Review (“PGR”) is a Patent Trial and Appeal Board (“PTAB”) proceeding established under 35 U.S.C. § 321 that permits the PTAB to review the patentability of claims in a patent based on any grounds under 35 U.S.C. §...more
In the much-anticipated United States Supreme Court decision this week, Cuozzo Speed Tech., LLC v. Lee, the Supreme Court upheld two important aspects of practice before the Patent Trial and Appeal Board (“PTAB”). ...more
In a key development regarding Inter Partes Review (IPR) procedure, on September 1, 2015, the Patent Trial and Appeal Board (the “Board”) issued an order that lays the groundwork for how the Board may address cases on remand...more
On August 20, 2015, the Patent and Trademark Office published, in the Federal Register, a set of “Amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board” that would amend 37 CFR Part 42. Among...more
Following a recent hearing involving K&L Gates’ lawyers before the Patent Trial and Appeal Board (“PTAB”) on behalf of the patent owner in an inter partes reexamination, several key practice tips emerged that may be useful as...more