On June 22, 2022, the U.S. Patent and Trademark Office issued two documents regarding the Patent Trial and Appeals Board's discretionary denials of post-grant challenges based on parallel litigation: a retrospective study of...more
Although the Federal Circuit faced obviousness issues that were simple to resolve in Adidas AG v. Nike, Inc., it saw an opportunity to continue to clarify its jurisprudence regarding standing on appeal from an adverse final...more
6/29/2020
/ Adidas ,
Appeals ,
Evidence ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Nike ,
Obviousness ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Remand ,
Reversal ,
SAS Institute Inc. v Iancu ,
Standing
The sponsors of the STRONGER Patents Act of 2019 -- introduced to the Senate on July 10, 2019 -- may be from both political parties, but they share one clear trait: they hate what post-grant proceedings have done to patent...more
In this case, the question ultimately answered by the Federal Circuit was a straightforward question of statutory interpretation: in determining whether a party is time-barred from filing a petition for inter partes review...more
In a 6-3 decision, the Supreme Court today held that federal government agencies cannot avail themselves of America Invents Act (AIA) post-grant proceedings. This decision was based on the Court's determination that the...more
AVX Corporation and Presidio Components are long-standing competitors in the market for electronic components, including capacitors. Their competition has caused animosity, which in turn has resulted in patent infringement...more
In AIA post-grant proceedings -- specifically, Post-Grant Review ("PGR"), Inter Partes Review ("IPR"), and Covered Business Method ("CBM") review -- the patentee has the right to seek to amend the claims rather than fight...more
In 2011, the Leahy-Smith America Invents Act (“AIA”) established new post-issuance procedures for challenging the validity of a granted patent before the Patent Trials and Appeal Board (“PTAB” or “Board”). Inter partes...more
3/22/2017
/ America Invents Act ,
Covered Business Method Patents ,
Covered Business Method Proceedings ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Jurisdiction ,
Patent Agent Privilege ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trademark Registration ,
Trademarks ,
USPTO
Seeking to end years of little clarity on two key ethical issues for practitioners, the Patent Office has proposed two new rules of practice. The first rule would allow parties to invoke privilege in inter partes proceedings...more
Patentable Subject Matter after Alice: Best Practices for Responding to 35 U.S.C. § 101 Rejections -
It has been over 20 months since the Supreme Court handed down the landmark decision in Alice Corp. v. CLS Bank Int’l,...more
3/3/2016
/ AFCP ,
America Invents Act ,
Broadest Reasonable Interpretation Standard ,
CLS Bank v Alice Corp ,
Covered Business Method Patents ,
Cuozzo Speed Technologies v Lee ,
Defend Trade Secrets Act (DTSA) ,
Inter Partes Review (IPR) Proceeding ,
Patent Prosecution Highway ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101 ,
Trade Secrets ,
USPTO Pilot Program
In This Issue:
- Prior Art Redefined Under the AIA
- PTAB Holds a Firm Line on Additional Discovery
- The Art of Prior Art Searching
- Anticipating a Federal Trade Secret Law
- Trademark...more
11/26/2014
/ Additional Discovery ,
America Invents Act ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patentability Search ,
Patents ,
Prior Art ,
SCOTUS ,
Trade Secrets ,
USPTO