On May 6th, 2024, the PTAB declined Ubiquiti Inc.’s (“Petitioner’s”) request to institute inter partes review. Ubiquiti Inc. v. XR Communications LLC D/B/A Vivato Tech., IPR2024-00148, Paper 12 (May 6, 2024). The PTAB...more
The PTO has issued a Notice of Proposed Rulemaking regarding who may represent parties in PTAB post-grant trials. The proposal is part of the USPTO’s wider initiative to expand access to practice before the Office. ...more
5/30/2024
/ America Invents Act ,
Client Services ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Pro Hac Vice ,
USPTO
USPTO Director Kathi Vidal recently designated precedential section II.E.3 of Penumbra, Inc. v. RapidPulse, Inc. and clarified that the priority analysis for an AIA reference patent as prior art is different than for a...more
On October 6, 2023, the United States Patent and Trademark Office (“USPTO”) issued a Notice of Proposed Rulemaking (“NPR”) making changes to the Patent Trial and Appeal Board’s (“PTAB”) internal circulation and review of...more
11/20/2023
/ Administrative Law Judge (ALJ) ,
America Invents Act ,
Comment Period ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Notice of Proposed Rulemaking (NOPR) ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
Congress implemented the Leahy-Smith America Invents Act (“AIA”) to “establish a more efficient and streamlined patent system that [would] improve patent quality and limit unnecessary and counterproductive litigation costs.” ...more
The USPTO continues to seek public feedback on PTAB procedures and potential rule changes. In addition to soliciting comments on the many proposed rule changes announced on April 21, 2023, the USPTO also recently issued a...more
6/26/2023
/ America Invents Act ,
Comment Period ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Rules ,
Regulatory Agenda ,
Regulatory Reform ,
USPTO
On February 24, 2023, Director Kathi Vidal issued a decision under director review granting rehearing and modifying the final written decision for Nested Bean, Inc. v. Big Beings USA Pty. Ltd. Nested Bean, Inc. (“Nested...more
The PTAB recently hosted a Boardside Chat on effectively presenting technology in AIA proceedings. Patent Trial and Appeal Board Boardside Chat: Presenting Technology in AIA Proceedings, (Nov. 17, 2022) (“Presenting...more
In OpenSky Industries, LLC v. VLSI Technology LLC, Under Secretary of Commerce for Intellectual Property, Katherine Vidal, issued a precedential decision regarding OpenSky’s violation of the Director’s express order and...more
In a recent Boardside Chat webinar, a panel made up of PTAB judges and practicing attorneys discussed the use of experts and expert testimony in American Invents Act (AIA) proceedings. The panelists stressed that...more
On June 10, 2022, the PTAB in Apple Inc. v. MemoryWeb LLC denied Apple’s “conditional” IPR petition but instituted review of Apple’s concurrently-filed PGR petition, finding that MemoryWeb’s U.S. Patent No. 11,017,020 (“the...more
Since the passage of the America Invents Act in 2012, both petitioners and patent owners have expressed concerns regarding the procedures and practices of the Patent Trial and Appeal Board (PTAB). In an effort to respond to...more
6/24/2022
/ America Invents Act ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
Regulatory Agenda ,
Regulatory Reform ,
USPTO
A recent PTAB decision in Sattler Tech Corp. v. Lyu represents an important reminder to carefully review the procedural and substantive requirements for filing a petition for an AIA trial, especially when dealing with...more
We recently reported on bipartisan legislation introduced by Senators Patrick Leahy (D) and John Cornyn (R) to significantly revamp certain features of the America Invents Act (AIA), ten years after its debut. This proposed...more
10/22/2021
/ America Invents Act ,
Estoppel ,
Injury-in-Fact ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Inventions ,
Patent Trial and Appeal Board ,
Patents ,
Proposed Legislation ,
Regulatory Agenda ,
Regulatory Reform ,
Regulatory Standards ,
Standing ,
USPTO
The United States Patent and Trademark Office (USPTO) announced plans for the Patent Trial and Appeal Board (PTAB) to extend the Motion to Amend (MTA) pilot program. This program provides additional options for a patent owner...more
A PTAB panel found FedEx sufficiently akin to Priority Mail Express to meet the petition service rule, and to the extent necessary further waived the regulatory requirements related to the timing of Petitioner’s (TIZ Inc....more
On January 28, 2021, the PTAB held a Boardside Chat webinar at which three PTAB judges discussed four recent developments related to America Invents Act (“AIA”) trials....more
On January 19th, the PTO published an Executive Summary encapsulating stakeholder feedback received from the October 20, 2020 Request for Comments on institution of America Invents Act (AIA) proceedings. The USPTO received...more
On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference...more
The Supreme Court has held the PTAB’s “decision to deny a petition is a matter committed to the Patent Office’s discretion,” and that there is “no mandate to institute review.” Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct....more
10/21/2020
/ §314(a) ,
America Invents Act ,
Cuozzo Speed Technologies v Lee ,
Denial of Institution ,
International Trade Commission (ITC) ,
Parallel Proceedings ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Trial Practice Guidance
Current PTAB-relevant case law dictates:
35 U.S.C. § 315(b) “unambiguously precludes the Director from instituting an IPR if the petition seeking institution is filed more than one year after the petitioner, real party in...more
After having to be postponed due to coronavirus concerns, the 2020 PTAB Bar Association Annual Conference has now been rescheduled and is going forward on September 24-25, 2020, with pre-conference sessions being held...more
The Patent Trial and Appeal Board (PTAB) has published the sixth installment of its Motion to Amend Study. The study tracks and analyzes all motions to amend filed in America Invents Act trials, including pilot motions,...more
Recently, we reported about the Supreme Court’s decision holding that the AIA’s “no appeal” provision in 35 U.S.C. § 314(d) means that the PTAB’s decision not to institute IPR because a petition is time barred under 35 U.S.C....more
On June 11, 2020, the Patent Trial and Appeal Board (PTAB) held a Boardside Chat webinar to discuss new developments in AIA trials. The discussion featured panelists Vice Chief Judge Michael Tierney and Lead Judge William...more