In Pfizer Inc., v. Sanofi Pasteur Inc., SK Chems Co. Ltd., v. Vidal, 2019-1871 (March 5, 2024), the Federal Circuit affirmed the Board’s conclusions that claims 1–45 of U.S. Patent No. 9,492,559 were unpatentable due to...more
9/6/2024
/ Administrative Review ,
America Invents Act ,
Claim Construction ,
Interim Guidance ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
USPTO
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
4/5/2024
/ Amgen v Sanofi ,
Comment Period ,
Confidential Information ,
Daubert Ruling ,
Enablement Inquiries ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
NPRM ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
Petitioner Allowed to Proceed in “Understudy Role” -
In American Honda Motor Co., Inc. v. Neo Wireless, LLC, IPR2023-0791 (P.T.A.B. March 30, 2023), American Honda Motor Co., Inc. (“Honda”) filed a “copycat” Petition...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This periodic digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
Derivation Showing Overcome by Evidence of Respondent’s Prior Conception in Rare Derivation Proceeding -
The Board issued a decision in a rare derivation proceeding filed by Global Health Solutions LLC (“Petitioner”)...more
Precedential Opinion Addresses Conclusory Expert Declarations -
In a precedential opinion in Xerox Corp. v. Bytemark, Inc., IPR2022-00624, Paper 9 (P.T.A.B. Aug. 24, 2022), the Board denied institution of an inter partes...more
3/31/2023
/ Administrative Patent Judges ,
Conflicts of Interest ,
Denial of Rehearing ,
Due Process ,
Filing Deadlines ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
USPTO ,
Xerox
Fate of Fintiv -
As discussed in our Client Alert, “Fintiv 2.0: USPTO Director Issues Guidance Softening Risk of Discretionary Denial,” USPTO Director Kathi Vidal issued a set of interim procedures clarifying how the PTAB...more
Newly appointed USPTO Director Kathi Vidal issued a set of interim procedures clarifying how the Patent Trial and Appeal Board (PTAB or Board) should apply its Fintiv decision going forward. Vidal’s guidance, which will...more
Expert Testimony Alone Insufficient to Show Examiner's Material Error in Considering Prior Art -
In Nespresso USA, Inc. v. K-fee System GmbH, IPR2021-01222, Paper 9, at 25 (PTAB Jan. 18, 2022), the Board denied...more
6/15/2022
/ Estoppel ,
Expert Testimony ,
Inter Partes Review (IPR) Proceeding ,
Patent Examinations ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
PTAB Precedential Opinion Panel (POP)
FORUM SELECTION CLAUSES MAY OR MAY NOT PRECLUDE PTAB REVIEW -
In Kannuu Pty Ltd. v. Samsung Electronics Co., Ltd. & Samsung Electronics America, Inc., No. 21-1638 (Fed. Cir. Oct. 7, 2021), the Federal Circuit considered...more
12/17/2021
/ Administrative Procedure Act ,
Admissible Evidence ,
Evidence ,
Ex Partes Reexamination ,
Federal Rules of Evidence ,
Final Written Decisions ,
Forum Selection ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Motion to Exclude ,
Non-Disclosure Agreement ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
TIMING OF REQUEST KEY FOR BOARD DECISIONS ON MOTIONS TO TERMINATE -
In Ocado Group PLC v. AutoStore Technology AS, PGR2021-00038 (July 30, 2021), Petitioner moved to withdraw its petition, arguing that efficiency favored...more
At an event held by the U.S. Manufacturers Association for Development and Enterprise and the Alliance for Automotive Innovation on Wednesday September 22, 2021, Senator Leahy (D- Vt.) announced the introduction of the...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
8/20/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Covered Business Method Patents ,
Denial of Institution ,
Director of the USPTO ,
Discovery ,
Evidence ,
Executive Branch ,
Executive Powers ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
SCOTUS ,
Service by Mail ,
United States v Arthrex Inc ,
USPTO
In the long-awaited decision in United States v. Arthrex, Inc., the U.S. Supreme Court confirmed that the Patent Trial and Appeal Board is unconstitutionally structured, but held that the correct remedy is more limited than...more
6/22/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Corporate Counsel ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
APPLICATION OF NHK/FINTIV ANALYSIS CONTINUES TO EVOLVE -
The Board’s application of its precedential NHK and Fintiv decisions to deny petitions based on parallel litigation continues to develop. The Board recently...more
12/31/2020
/ Administrative Procedure Act ,
Attorney's Fees ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Inter Partes Review (IPR) Proceeding ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Real Party in Interest
As a result of feedback it received, the PTAB introduced a new web portal that allows any member of the public to nominate a decision for precedential or informative designation. The request must provide information about the...more
11/2/2020
/ Clerical Errors ,
Estoppel ,
Exclusive Licenses ,
Motion to Amend ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Portal ,
Precedential Opinion ,
Prior Art ,
Real Party in Interest
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
9/30/2020
/ Administrative Procedure Act ,
America Invents Act ,
Arbitrary and Capricious ,
Covered Business Method Patents ,
Expert Testimony ,
Incorporated by Reference ,
Inter Partes Review (IPR) Proceeding ,
Motivation to Combine ,
Parallel Proceedings ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Prior Art ,
Summary Judgment ,
USPTO
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
8/28/2020
/ Administrative Procedure Act ,
America Invents Act ,
Anticipation ,
Burden of Proof ,
Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Motion To Strike ,
Obviousness ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Post-Grant Review ,
Prior Art ,
Section 101
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
7/15/2020
/ Advisory Opinions ,
Denial of Certiorari ,
Denial of Institution ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Pre-AIA Patents ,
Prior Art ,
PTAB Precedential Opinion Panel (POP) ,
SCOTUS
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
6/4/2020
/ § 314(d) ,
Administrative Patent Judges ,
Claim Construction ,
Cuozzo Speed Technologies v Lee ,
Inter Partes Reexamination ,
Patent Examinations ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Prior Art ,
PTAB Precedential Opinion Panel (POP) ,
Real Party in Interest ,
Thryv Inc v Click-To-Call Technologies LP ,
USPTO
The U.S. Patent and Trademark Office (USPTO) has proposed amendments to several rules governing proceedings before the Patent Trial and Appeal Board (PTAB). The proposed rule changes published today in the Federal Register......more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
5/15/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Declaratory Judgments ,
Dissenting Opinions ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Prior Art ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
3/6/2020
/ Equitable Estoppel ,
Indefiniteness ,
Inter Partes Review (IPR) Proceeding ,
Motion to Dismiss ,
Patent Invalidity ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
USPTO
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more
2/14/2020
/ § 315(b) ,
Appointments Clause ,
Estoppel ,
Evidence ,
Hearsay ,
Inter Partes Review (IPR) Proceeding ,
Mootness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Printed Publications ,
Prior Art ,
PTAB Precedential Opinion Panel (POP) ,
USPTO