In AVX v Presidio, the Federal Circuit again found the Petitioner could not appeal a partial loss because it lacked standing to appeal as there was no underlying lawsuit on the patent involved in the IPR proceeding....more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
IPO published the following announcement on April 1st:
Today the U.S. Supreme Court announced that it is reversing its infamous 2014 decision on patent eligibility in Alice Corp. v. CLS Bank and remanding. The court took...more
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
Joinder Petitioners Have Standing To Appeal -
In Mylan v. Research Corporation Tech (RCT), the Patent Owner, who won at the PTAB, argued that time barred joinder petitioners (Mylan, Breckenridge and Alembic - Appellants)...more
In a precedential decision Realtime (page 8-9) and a follow-on non-precedential decision Polygroup (page 15), two Federal Circuit panels (with Dyk on each) appear to hold that a single two-reference obviousness Ground, when...more
2/27/2019
/ Alternative Pleadings ,
Appeals ,
Follow-On Patent Petitions ,
Obviousness ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Printed Publications ,
Statement of Grounds
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
2/25/2019
/ Administrative Proceedings ,
America Invents Act ,
Appeals ,
Defense Strategies ,
Joinder ,
Leave to Appeal ,
Litigation Strategies ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Right To Appeal ,
Standing
Rule 36 is a single sentence affirmance. Yet to explain the impact of a Rule 36 decision on later filed cases, the Court needed to issue a 7-page precedential decision. In Virnetx v Apple the Court held Rule 36 creates...more
1/3/2019
/ Ambiguous ,
Appeals ,
Best Practices ,
Collateral Estoppel ,
Motion for Reconsideration ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Printed Publications ,
Rule 36
Recently, the Federal Circuit held that an ex-employee (of Cisco) who founded a competitor (Arista) can challenge their own assigned patent, finding that, after assignment, they are not the patent owner. The Court held that...more
1/2/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Assignor Estoppel ,
Employee Inventors ,
Exit Transactions ,
Inventors ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Popular ,
Reviewability Determinations
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
9/24/2018
/ § 315(b) ,
Administrative Procedure ,
Appeals ,
Best Practices ,
CAFC ,
International Trade Commission (ITC) ,
International Trade Disputes ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Time-Barred Claims
Measure twice cut once – the same can be said of the Petition in American Invents Act (“AIA”) proceedings. Time and again the Board and Federal Circuit[i] have used the Administrative Procedure Act[ii] (“APA”) – guaranteeing...more
8/24/2018
/ Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Evidence ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Patent Infringement ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Pleadings ,
Rebuttal ,
Trial Practice Guidance
In a 56 page decision, including a concurrence, the Federal Circuit vacated and remanded based on finding that the Board failed to apply the law correctly by failing to properly consider evidence alleged to show that an RPX...more
U.S. Court of Appeals for the Federal Circuit affirmed a U.S. Patent Trial and Appeal Board (PTAB) decision finding that tribal sovereign immunity does not apply to Inter Partes Review (IPR) proceedings. In so holding, the...more
7/25/2018
/ Adjudicatory Process ,
Administrative Agencies ,
Administrative Proceedings ,
Allergan Inc ,
Appeals ,
Enforcement Actions ,
Inter Partes Review (IPR) Proceeding ,
IP Assignment Agreements ,
Motion to Dismiss ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Sovereign Immunity ,
Tribal Governments
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
7/20/2018
/ Administrative Law Judge (ALJ) ,
Administrative Procedure ,
Administrative Proceedings ,
Appeals ,
Constitutional Challenges ,
Depositions ,
Expert Witness ,
Issue Preclusion ,
Joinder ,
Litigation Strategies ,
Lucia v SEC ,
Motion To Seal ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Sanctions ,
SCOTUS ,
USPTO
The Federal Circuit recently held in Nestlé II that it, and by implication the PTAB, should not relitigate claim construction even for indirectly related patents having different specifications....more
The PTAB Strategies and Insights Newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio.
This month we tackle three important...more
Nothing hurts worse than a Rule 36 (single page, single sentence affirmance of the decision below) after years of work and millions of dollars spent on a case. Rule 36 makes rehearing, en banc review, and/or cert petitions a...more
On January 8, 2018, the Federal Circuit issued its long-awaited en banc decision in Wi-Fi One, LLC v. Broadcom Corporation, No. 2015-1944, 2018 WL 313065 (Fed. Cir. Jan. 8, 2018). The issue before the en banc Court was the...more
1/25/2018
/ § 315(b) ,
Appeals ,
Claim Amendments ,
Cuozzo Speed Technologies v Lee ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Motion to Amend ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Time-Barred Claims
The U.S. Constitution guarantees due process before a person can be deprived of life, liberty, or property. The Administrative Procedure Act (APA) enforces the due process protection in the USPTO and Board proceedings. Under...more
1/19/2018
/ Administrative Procedure Act ,
Appeals ,
Claim Construction ,
Constitutional Challenges ,
Due Process ,
Final Written Decisions ,
Notice Requirements ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
The PTAB Strategies and Insights Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both...more
1/18/2018
/ § 315(b) ,
Administrative Procedure Act ,
Appeals ,
Design Patent ,
Due Process ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Non-Appealable Decisions ,
Notice Requirements ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Time-Barred Claims ,
USPTO
The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more