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
As fewer cases go to trial nowadays, judges have long been mindful of providing young lawyers with “stand-up” opportunities. For example, Judge William Alsup of the Northern District of California, in his Standing Order,...more
As Jones Day's PTAB Litigation Blog marks its 500th posting, Dave Cochran and Matt Johnson discuss current patent litigation developments, near-term trends, and how the PTAB is handling cases during the COVID-19 lock down....more
The emergence of artificial intelligence-related technology as a means of innovation has led to uncertainties for companies across industries, primarily because U.S. patent law has historically held that intellectual property...more
4/20/2020
/ Artificial Intelligence ,
Computer-Related Inventions ,
Copyright ,
Innovation ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inventors ,
Patents ,
Popular ,
Trade Secrets ,
Trademarks ,
USPTO
On March 30, 2020, the Federal Circuit relied on Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) to vacate and remand several related PTAB decisions, including in proceedings where the patent owner did...more
The Court of Appeals for the Federal Circuit (CAFC) has denied the United States Patent and Trademark Office’s (USPTO) unopposed motion to stay its mandate issued in Arthrex. The USPTO filed its motion seeking a 90 day stay...more
On March 31, 2020, the Patent Office issued a Notice of Waiver of Patent-Related Timing Deadlines under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) passed by Congress last week. Under the due date...more
In a recent decision, the PTAB admitted that it erred in its prior determination of unpatentability, and authorized supplemental briefing on the patentability of substitute claims. See Rimfrost AS v. Aker Biomarine Antarctic...more
On January 31, 2020, the Federal Circuit vacated and remanded a Patent Trial and Appeal Board (“PTAB”) final written decision in view of Arthrex, but did so reluctantly because it disagreed with the merits and questioned the...more
2/15/2020
/ Administrative Patent Judges ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
USPTO ,
Vacated
January 17 Update: On January 17, each of the parties filed responses to the rehearing petitions -
As we have previously discussed on this blog and elsewhere, the Federal Circuit’s decision in Arthrex v. Smith & Nephew...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
The Federal Circuit and the patent world continues to grapple with the court’s decision in Arthrex v. Smith & Nephew. Since our last updates, the parties in Arthrex and other cases have continued the push for en banc...more
1/20/2020
/ Administrative Patent Judges ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
USPTO ,
Vacated
The Federal Circuit’s decision in Arthrex v. Smith & Nephew excited and disrupted the patent world... Inter partes review (IPR) reshaped patent law and patent litigation this decade after the America Invents Act took effect....more
12/17/2019
/ Administrative Patent Judges ,
America Invents Act ,
Appeals ,
Appellate Briefs ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Appointments ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Remand ,
Statutory Authority ,
USPTO ,
Vacated
On December 4, 2019, the PTAB hosted the last installment for 2019 in its “Boardside Chat” webinar series. The program, presented by Deputy Chief Judge Jacqueline Bonilla and Lead Administrative Patent Judge Jessica Kaiser,...more
On Tuesday, the House Judiciary Committee’s Subcommittee on Courts, Intellectual Property, and the Internet conducted a hearing to discuss recent court decisions, namely the Federal Circuit’s decision in Arthrex. Previously...more
On October 10, 2019, the Patent Trial and Appeal Board (“PTAB”) issued a Final Written Decision in favor of Avepoint, Inc. (“Avepoint”) and against Onetrust, LLC (“Onetrust”) in an America Invents Act post grant review...more
The PTAB has previously applied to IPR filings the statutory grace period under 35 U.S.C. § 21(b) for USPTO papers and fees due on a weekend or holiday. See Samsung Elecs. Co. v. Immersion Corp., Case IPR2018-01468, slip op....more
In a recent decision, the PTAB decided to institute inter partes review (“IPR”) of U.S. Patent No. 7,937,394 B2 despite Patent Owner’s claims that Petitioner engaged in gamesmanship and asserted references and combinations...more
On July 15, 2019, the USPTO’s Patent Trial and Appeal Board (PTAB) published a second update to the AIA Trial Practice Guide (TPG) (“2nd Update”), providing additional guidance for trial practice before the Board.
The...more
7/24/2019
/ Additional Discovery ,
America Invents Act ,
Claim Construction ,
Covered Business Method Patents ,
Cross Examination ,
Expert Testimony ,
Guidance Update ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Trial Practice Guidance ,
USPTO
The USPTO has published a second update to the AIA Trial Practice Guide (TPG) containing additional guidance about trial practice before the Board.
The USPTO published the original TPG in August 2012, concurrent with the...more
Institution rates have ticked up while petition filing rates are down slightly so far compared to fiscal year 2018. The running rate for institutions through the first six months of FY 2019 is at 64% compared to 60% in the...more
Further to the PTAB’s efforts to improve the ability of patent owners to amend claims in an AIA trial via the Motion to Amend Pilot program, the USPTO recently issued guidance on other avenues for amending claims of patents...more
To facilitate claim amendments in inter partes, post-grant and covered business method patent reviews (collectively AIA trials), the USPTO on October 29, 2018, published a request for comment (“RFC”) on a proposed procedure...more