In a previous post from July 2021, we discussed the interim process for Director review in PTAB proceedings post-Arthrex. Since then, only three out of over 175 requests for Director review of a Final Written Decision have...more
On April 5, 2022, the Senate confirmed Kathi Vidal as the new Director of the USPTO by voice vote.
President Joe Biden nominated Vidal for the post last October. ...more
On October 26, 2021, President Biden nominated Kathi Vidal – the managing partner of Winston and Strawn’s Silicon Valley office – as Director of the United States Patent and Trademark Office (USPTO). ...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
On July 6th and 7th, the USPTO made good on its promise to not wait for a confirmed director to begin Arthrex Director reviews, issuing its first denials of review requests. The full press release is below:...more
8/3/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Covered Business Method Patents ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SCOTUS ,
Sua Sponte ,
United States v Arthrex Inc ,
USPTO
On July 20th, the PTAB provided additional clarifications regarding its views on Arthrex and how its interim procedures for requesting Director review will work for cases receiving Final Written Decisions on a going forward...more
7/22/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
The United States Supreme Court has delivered its decision in U.S. v. Arthrex, which determined whether appointments of administrative patent judges to the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board...more
7/20/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
In its July 1st Boardside Chat, the PTAB discussed the Supreme Court’s recent Arthrex decision and the interim procedure for Director review. The panel included Drew Hirschfeld (Performing the functions and duties of the...more
7/7/2021
/ Administrative Patent Judges ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
On June 29th, the PTO issued an initial protocol for requesting Director review of a PTAB Final Written Decision according to the Supreme Court’s Arthrex decision. This Arthrex protocol is similar to the current procedure...more
6/30/2021
/ Administrative Patent Judges ,
Administrative Review ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Executive Branch ,
Executive Powers ,
Final Written Decisions ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Interim Measures ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
In Carr v. Saul, the U.S. Supreme Court unanimously held that a party can raise a challenge under the Constitution’s Appointments Clause to an Administrative Law Judge’s (“ALJ”) decision, even if the party did not raise the...more
Partners Matt Johnson and Sarah Geers talk about former USPTO Director Andrei Iancu's impact on the PTAB, and what we might expect from a new director under the Biden Administration. They also comment on why patent litigation...more
The USPTO designated Snap, Inc. v. SRK Tech. LLC, IPR2020-00820 (PTAB October 21, 2020) (Paper 15) (“Snap”) as precedential as to § II.A regarding its discretion under 35 U.S.C. § 314(a) to deny institution of inter partes...more
In Sand Revolution II, LLC v. Continental Intermodal Group-Trucking LLC, IPR2019-1393, Paper 19, (PTAB April, 7 2020), the Board denied briefing based on a lack of jurisdiction while the Precedential Opinion Panel request was...more
AI is becoming ubiquitous across all industries. AI systems and services are embedded in everyday products and services, including Amazon's Alexa, Netflix streaming services, and Nest smart thermostats. AI systems are also...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 PTAB has added an online form to the USPTO website that allows the submission of an amicus request addressing a pending request for Precedential Opinion Panel (POP) review. This form will enable interested parties to...more
On Tuesday, the Supreme Court granted certiorari in the three appeals from the Federal Circuit’s Arthrex decision, consolidating those three cases for briefing and argument. The questions to be presented are as follows...more
The Patent Trial and Appeal Board (PTAB) has added an online form to the USPTO website that allows any member of the public to nominate any PTAB decision for precedential or informative designation...more
Holding its first mock oral arguments, the PTAB provided LEAP eligible participants with a unique opportunity to argue in front of PTAB judges. On August 7, 2020, mock oral PTAB hearings were held virtually with 40 LEAP...more
8/21/2020
/ Bar Associations ,
Inter Partes Review (IPR) Proceeding ,
LEAP ,
Litigation Strategies ,
Mock Trials ,
Oral Argument ,
Patent Litigation ,
Patents ,
Trial Practice Guidance ,
Trial Preparation ,
USPTO ,
Young Lawyers
Less experienced patent practitioners may be granted additional oral argument time in front of the Patent Trial and Appeals Board (PTAB) with the Legal Experience and Advancement Program (LEAP). LEAP helps foster development...more
On May 27, 2020, the USPTO announced a notice of proposed rulemaking that would affect IPR, PGR and CBM proceedings. Most significantly, the proposed rules would eliminate the presumption in favor of petitioners for material...more
The Situation: Artificial intelligence ("AI") is being used to develop new inventions without human aid. As AI capabilities increase, patent offices around the globe are being confronted with difficult questions about whether...more