As reported in our December 2019 newsletter, in Lectrosonics v. Zaxcom the Patent Trial and Appeal Board (PTAB or Board) granted Zaxcom’s motion to amend and, under a nexus-analysis framework, found each of the substitute...more
The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance...more
8/6/2020
/ Administrative Procedure ,
Due Process ,
Inter Partes Review (IPR) Proceeding ,
Litigation Strategies ,
Motion to Amend ,
Notice Requirements ,
Oral Hearings ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
PTAB Precedential Opinion Panel (POP) ,
Sua Sponte
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
7/31/2020
/ Administrative Procedure ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Nonobvious ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Precedential Opinion ,
PTAB Precedential Opinion Panel (POP) ,
Substitute Claims ,
USPTO
Different Board panels have made inconsistent decisions on the next-business day rule under 35 U.S.C. § 21(b); 37 C.F.R. § 1.7 depending on whether the due date is statutory or stipulated by the parties.
For example, when...more
The Board made a rare reversal of an institution decision – turning a denial of institution into trial in Sand Revolution v . Continental Intermodal Group-Trucking, IPR2019-01393, Paper 24 (PTAB June 16, 2020). The denial had...more
On June 15, 2020, the Supreme Court issued an Order in Emerson Elec Emerson Electric Co., Petitioner v. SIPCO, LLC, Case 19-966, stating “Petition GRANTED. Judgment VACATED and case REMANDED for further consideration in light...more
6/26/2020
/ America Invents Act ,
Covered Business Method Patents ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Petition for Writ of Certiorari ,
Remand ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Vacated
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
6/25/2020
/ § 315(b) ,
America Invents Act ,
Covered Business Method Patents ,
Delays ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Judicial Review ,
Jury Trial ,
Non-Appealable Decisions ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patent-Eligible Subject Matter ,
Patents ,
Petition For Rehearing ,
Petition for Writ of Certiorari ,
Remand ,
Reversal ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
USPTO ,
Vacated
Most readers have been following the impact of the Federal Circuit’s decision in Arthrex and know that an earlier and less developed Arthrex I case is on cert to the Supreme Court asking the Court to address the appointments...more
Since arriving at the USPTO, Director Iancu has tried to bring clear messages and consistency to the Office. For purposes of this article, we concentrate on the new POP procedures for Board case law and rules, and how the...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
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
In Acoustic Technology v. Itron Networked Solutions, the Federal Circuit was faced with a situation in which the Petitioner’s real party-in-interest/privy changed after institution, although the change was in the works before...more
3/24/2020
/ § 315(b) ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Record Preservation ,
Time-Barred Claims ,
Waiver Rule
In extraordinary times, sometimes the ordinary is comforting, so we want to bring you a short newsletter this month and provide some operating details for the major patent agencies in the US.
First, we hope all our...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
3/3/2020
/ Administrative Patent Judges ,
America Invents Act ,
Estoppel ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Litigation Strategies ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
In Personal Audio, the Federal Circuit upheld a district court judgment dismissal of a jury verdict for patent owner throwing out a $1.3 million judgement because the patent was later invalidated at the PTAB. Patent owner...more
2/11/2020
/ Appeals ,
Collateral Estoppel ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Jury Verdicts ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Reversal ,
Subsequent Litigation
The only real answers we are hearing from the patent community is that no one knows what to do or what might happen next --- post Arthrex.
As a quick reminder – the Federal Circuit ruled (1) the current PTAB judges were...more
2/5/2020
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Administrative Proceedings ,
America Invents Act ,
Appointments Clause ,
Constitutional Challenges ,
Denial of Certiorari ,
Litigation Strategies ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition for Writ of Certiorari ,
Remand ,
Severability Doctrine ,
Split of Authority ,
USPTO
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
2/1/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
CLS Bank v Alice Corp ,
Collateral Estoppel ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Jury Verdicts ,
Patent Trial and Appeal Board ,
Patents ,
Reversal ,
SCOTUS ,
Subsequent Litigation
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
11/27/2019
/ § 315(b) ,
Administrative Patent Judges ,
Administrative Proceedings ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Evidence ,
Final Written Decisions ,
Litigation Strategies ,
Motivation to Combine ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Service of Process ,
Time-Barred Claims
Supplemental Examination was born out of fixing potential inequitable conduct issues before they are raised in a court proceeding. 35 U.S.C. § 257(a); 27 CFR § 1.601; M.P.E.P. § 2800. The stated goal is to improve patent...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
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
The USPTO explained the significance of the cases as follows:
Becton, Dickinson and Company v. B. Braun Melsungen AG, Case IPR2017-01586 (PTAB Dec. 15, 2017) (Paper 8) – (precedential as to section III.C.5, first paragraph...more
In IPR2019-00567 (Paper 23 at 29-30) and IPR2019-00568 (Paper 22 at 23-24), the PTAB, for potentially the first time, denied institution partially based on the Petitioner raising the same issues in its Petition that had been...more
9/5/2019
/ §314(a) ,
Claim Construction ,
Claim Preclusion ,
Estoppel ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Partial Institution ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art
The Federal Circuit recently decided a reexamination case, VirnetX v. Apple and Cisco, that addressed two issues: (1) was requester estopped from maintaining its reexams under the pre-AIA version of 35 U.S.C. § 317(b) (2006)...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
8/30/2019
/ § 315(b) ,
Administrative Proceedings ,
Estoppel ,
Inter Partes Reexamination ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Partial Institution ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patents ,
Section 325(d) ,
Time-Barred Claims ,
USPTO