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
11/18/2020
/ Comment Period ,
Federal Register ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventions ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Remand
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
10/23/2020
/ §315(e) ,
Administrative Patent Judges ,
Administrative Procedure ,
Arthrex Inc v Smith & Nephew Inc ,
Certiorari ,
Constitutional Challenges ,
Estoppel ,
Joinder ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
SCOTUS ,
United States v Arthrex Inc
This month we first refresh our readers on Shaw and SAS, and then we will look at two recent exemplary cases that we feel are illustrative of the current trends for petitioner estoppel.
We will show that the trend in the...more
In Alacritech, Inc. v. Intel Corp, Judge Stoll held that under the Administrative Procedure Act (APA) “[the Federal Circuit’s] review of a patentability determination is confined to ‘the grounds upon which the Board actually...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
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
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 movie Zootopia was hysterically funny because it equated animal stereotypes to what we encounter every day. For example, the best employee at the DMV was named Flash – who was a sloth. Actually, the entire DMV was run by...more
7/20/2019
/ Administrative Backlogs ,
Administrative Procedure ,
America Invents Act ,
Ex Partes Reexamination ,
Patent Expiration ,
Patent Invalidity ,
Patent Ownership ,
Patent Reissue Applications ,
Patents ,
Prior Art ,
Reissue Patents ,
USPTO
Just after making the NHK and Valve Corp decisions precedential, the Board distinguished them in Amazon. While NHK and Valve Corp resulted in denial, in Amazon the Board instituted trial despite Amazon having similar issues...more
5/29/2019
/ Administrative Proceedings ,
Amazon ,
Claim Construction ,
Discovery ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Infringement ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Prior Art
In IPR2018-00272, the Board denied a motion to terminate brought by a Patent Owner who argued that a district court’s finding of indefiniteness required termination of the PTAB proceedings for U.S. Patent. 9,393,208....more
5/28/2019
/ Claim Construction ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
Motion to Terminate ,
Parallel Proceedings ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Validity ,
Patents ,
Prior Art ,
Section 102 ,
Section 103 ,
Section 112 ,
Trial Court Orders
Eleven of thirteen cannabis patent claims survive PTAB challenge.
Insys Development Company, Inc. filed a petition requesting inter partes review of claims 1-13 of GW Pharmaceutical Ltd.’s patent directed to the use of...more
1/28/2019
/ Biopharmaceutical ,
Cannabidiol (CBD) oil ,
FDA Approval ,
Hemp ,
Inter Partes Review (IPR) Proceeding ,
Marijuana ,
Obviousness ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Pharmaceutical Patents ,
Prior Art
When faced with allegations of patent infringement at the International Trade Commission (ITC), a respondent must quickly evaluate whether or not to request an AIA review (hereinafter, inter partes review for convenience) at...more
9/26/2018
/ § 315(b) ,
Administrative Law Judge (ALJ) ,
America Invents Act ,
Clear and Convincing Evidence ,
Collateral Estoppel ,
Exclusion Orders ,
Imports ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Issue Preclusion ,
Litigation Strategies ,
Motion To Stay ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Section 101 ,
Section 112 ,
Statute of Limitations ,
Time-Barred Claims ,
Written Descriptions
The first real post-Aqua guidance issued from the Board on June 1, 2018 for motions to amend. Western Digital Corp. v. SPEX Technologies, Inc., IPR2018-00082 and IPR2018-00084 (Paper 13). According to the Western Digital...more
Though it can be difficult to avoid post-grant challenges, patents can be drafted to increase the chances of survival. In today’s environment, patents subject to post-grant proceedings face a very high likelihood of being...more
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
This is the third of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part two appeared in our November 2017 newsletter.
As we have noted in each of...more
The PTAB is starting to provide teeth to the Federal Circuit’s lead compound analysis making it more difficult for petitioners to successfully challenge chemical patents in AIA proceeding, as well as providing patent owners...more
This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more
11/21/2017
/ America Invents Act ,
Ex Partes Reexamination ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Obviousness ,
Patent Examinations ,
Patent Invalidity ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 325(d)
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
11/17/2017
/ America Invents Act ,
Constitutional Challenges ,
Expert Witness ,
Final Written Decisions ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
SAS Institute Inc v Matal ,
SCOTUS
Like Johnny Cash’s famous tune “A Boy Named Sue,” “secondary considerations” of non-obviousness suffer for their name. Courts have historically relegated this 4th Graham factor to a “secondary” status, considering objective...more
This is the first of a three-part series discussing developments around Section 325(d). Part two will appear in our November 2017 newsletter and part three will appear in our December 2017 newsletter.
Congress granted the...more