This issue of The PTAB Review begins by providing an analysis of how institution decisions consider declaration testimony submitted by a patent owner. Next, it summarizes proposed rulemaking from the United States Patent and...more
Last week, the U.S. Supreme Court decided two important administrative law cases that are expected to increase judicial authority over agency adjudications and rulemaking. In Securities & Exchange Commission v....more
This issue of The PTAB Review begins by summarizing a recent Patent Trial and Appeal Board (PTAB) decision strictly applying the public availability standard for prior art references as a basis for denying institution. Next,...more
Wilson Sonsini Goodrich & Rosati is pleased to present our 2023 PTAB Year in Review.
We begin with a review of 2023 petition filings and outcomes at the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and...more
This issue of The PTAB Review begins with a brief update about the U.S. Patent & Trademark Office (USPTO) Guidelines for when institution of an America Invents Act (AIA) trial (e.g., inter partes review or post-grant review)...more
This issue of The PTAB Review begins with two brief updates about the power of the Patent Office Director to review Patent Trial and Appeal Board (PTAB) decisions. Next, we examine a special circumstance under which a patent...more
This issue of The PTAB Review begins with a brief summary of changes to America Invents Act (AIA) trials recently proposed in Congress. It then explores a recent Federal Circuit decision rejecting arguments that the Patent...more
This issue of The PTAB Review begins with a brief summary of the U.S. Supreme Court’s most recent pronouncement about America Invents Act (AIA) reviews. It then provides an update on the Patent Trial and Appeal Board’s...more
7/2/2021
/ Administrative Patent Judges ,
Apple ,
Appointments Clause ,
Arthrex Inc v Smith & Nephew Inc ,
Corporate Counsel ,
Executive Branch ,
Executive Powers ,
Inter Partes Review (IPR) Proceeding ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Qualcomm ,
SCOTUS ,
United States v Arthrex Inc ,
USPTO
Earlier today, the U.S. Supreme Court decided the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were not constitutionally appointed, and that the patent owner, Arthrex, Inc., is entitled to a...more
6/23/2021
/ 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 this edition, we examine the effect of Fintiv on PTAB proceedings dealing with patents asserted in so-called “rocket docket” courts. Next, we provide a brief summary of several recent Federal Circuit cases. We conclude by...more
The firm's post-grant practice is pleased to present its 2020 PTAB Year in Review. The publication begins with a review of 2020 petition filings at the Patent Trial and Appeal Board (PTAB) and takes a closer look at the...more
In this edition, we discuss an update on the Arthrex Appointments Clause decision. We examine the continuing demise of same-party joinder and deference to Patent Trial and Appeal Board (PTAB) precedential decisions, and the...more
On October 31, 2019, a Federal Circuit panel issued Arthrex, Inc. v. Smith & Nephew, Inc., holding that administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) were unconstitutionally-appointed...more
AIA Institution Rates Following Supreme Court’s
SAS Decision -
On April 24, 2018, the Supreme Court issued its decision in SAS Institute v. Iancu, holding that when the Patent Trial and Appeal Board (PTAB) institutes an...more
Challenges to Immunology Patents Lead Increase in Biotechnology Cases at the PTAB in 2017 -
Throughout the history of inter partes review (IPR) proceedings, petitions have been dominated by challenges to patents directed...more
Judicial review of post-grant patent proceedings at the Patent Trial and Appeal Board (PTAB) is limited, but a federal court of appeals has somewhat loosened the restriction. On January 8, 2018, in Wi-Fi One, LLC v. Broadcom...more
1/11/2018
/ § 315(b) ,
America Invents Act ,
Appeals ,
Broadcom ,
Cuozzo Speed Technologies v Lee ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Trial and Appeal Board ,
Patents ,
Time-Barred Claims ,
USPTO
On October 4, 2017, the U.S. Court of Appeals for the Federal Circuit issued an en banc decision in Aqua Products, Inc., v. Matal, finding that the petitioner has the burden of proving the unpatentability of claims—even...more
Escaping PTAB Review Through Strategic Disclaimer in CBM Proceedings -
A patent is only eligible for covered business method (CBM) review if it: (1) claims a method or apparatus for performing data processing or other...more
On January 9, 2017, the U.S. Court of Appeals for the Federal Circuit issued a decision in Phigenix, Inc. v. Immunogen, Inc. dismissing an appeal by a petitioner from the Patent Trial and Appeal Board (PTAB) for lack of...more
On November 2, 2016, the U.S. Patent and Trademark Office (USPTO) issued a memorandum ("November 2016 Memo") to its patent examiners, updating them on recent subject matter eligibility decisions from the U.S. Court of Appeals...more
New Testimonial Evidence with Preliminary Responses: Panacea or Placebo?
Just over three years ago, during a keynote speech at the AIPLA annual meeting, the Patent Trial and Appeal Board (PTAB) was criticized as a...more
Covered Business Method Patent Review: What Constitutes a Financial Product or Service?
Along with inter partes review (IPR) and post-grant review (PGR), the America Invents Act (AIA) created a transitional program for...more
On June 20, 2016, the United States Supreme Court affirmed the decision of the Court of Appeals for the Federal Circuit in Cuozzo Speed Technologies v. Lee. The Supreme Court granted certiorari to consider two questions....more
Post-Grant Review Proceeding Filings Ramp Up In addition to inter partes review (IPR) and covered business method (CBM) review proceedings, the America Invents Act (AIA) provides for post-grant review (PGR) proceedings. PGR...more
6/10/2016
/ America Invents Act ,
Discovery ,
Estoppel ,
First-to-File ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Post-Grant Review ,
Precedential Opinion ,
Real Party in Interest ,
Rules of Practice ,
USPTO
On April 1, 2016, the U.S. Patent and Trademark Office (USPTO) issued another round of amendments to the rules governing Patent Trial and Appeal Board (PTAB) trial proceedings under the Leahy-Smith America Invents Act (AIA)....more