In conjunction with the release of the firm's year-in-review report, our speakers will discuss the recent cases surrounding IPR estoppels, evidentiary issues, and recovery, which notably highlight the interplay between the...more
Sterne, Kessler, Goldstein & Fox invites you to the webinar, "PTAB Analysis, Trends, and Forecast: Fintiv and Discretionary Denials," on Monday, March 21, 2022, from 1:00 to 2:00 PM (EDT).
In conjunction with the release...more
3/15/2022
/ Continuing Legal Education ,
Ex Partes Reexamination ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Applications ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Prior Art ,
Section 325(d) ,
Webinars
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed patent litigation. In its first...more
3/8/2022
/ America Invents Act ,
Biologics ,
Claim Construction ,
Constitutional Challenges ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Expert Testimony ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Obviousness ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
USPTO
[co-author: Jamie Dohopolski]
Love it or hate it, ignore the USPTO Patent Trial and Appeal Board (PTAB) at your peril. The introduction of the PTAB as part of the America Invents Act over ten years ago has forever changed...more
3/7/2022
/ §315(e) ,
35 U.S.C. § 285 ,
America Invents Act ,
Attorney's Fees ,
Biologics ,
Biosimilars ,
Biotechnology ,
Chemical Compounds ,
Claim Construction ,
Collateral Estoppel ,
Constitutional Challenges ,
Corporate Counsel ,
Credibility ,
Declaration ,
Depositions ,
Enhanced Damages ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Exceptional Case ,
Expert Testimony ,
Expert Witness ,
Final Written Decisions ,
Hatch-Waxman ,
Injunctive Relief ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Inventors ,
Life Sciences ,
Motion to Amend ,
Obviousness ,
Orange Book ,
Parallel Proceedings ,
Patent Applications ,
Patent Cancellation ,
Patent Infringement ,
Patent Invalidity ,
Patent Litigation ,
Patent Prosecution History ,
Patent Trial and Appeal Board ,
Patents ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-AIA Patents ,
Printed Publications ,
Prior Art ,
Section 112 ,
Section 325(d) ,
Standard Essential Patents ,
Testimony ,
USPTO ,
USPTO Pilot Program ,
Vacated ,
Written Descriptions
These graphs and charts appear as the center spread feature in the 2019 PTAB Year in Review: Analysis & Trends report....more
Powerful. Resilient. Ever-evolving. These characteristics of the Patent Trial and Appeal Board (PTAB) were on full display in 2019. This past year the PTAB received more than 1,300 inter partes review (IPR), post grant review...more
3/5/2020
/ Claim Construction ,
Concurrent Litigation ,
Constitutional Challenges ,
Corporate Counsel ,
Covered Business Method Proceedings ,
Design Patent ,
Estoppel ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Motion To Stay ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Trial Practice Guidance
The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle proceedings at the USPTO. It is designed to increase return on investment for all stakeholders looking at the entire...more
On March 15, 2019, the United States Patent and Trademark Office (USPTO) launched a pilot program that implements significant changes to motion to amend practice in AIA trials. The Office states that its goal in proposing...more
3/18/2019
/ Administrative Procedure ,
Administrative Proceedings ,
America Invents Act ,
Burden of Persuasion ,
Discovery ,
Filing Deadlines ,
Motion to Amend ,
New Guidance ,
Patent Owner Preliminary Response ,
Patents ,
Revised Motion To Amend (rMTA) ,
Rules of Practice ,
USPTO ,
USPTO Pilot Program
On October 26, 2018, the United States Patent and Trademark Office (USPTO) issued a Request for Comment on proposed changes to motion to amend practice in AIA trials. The Office states that its goal in proposing these changes...more
Federal Circuit Sheds Some Light on How SAS May Impact Pending Appeals from the PTAB — Court Terminates Appeals of Partially-Instituted IPRs and Remands Back to the PTAB to Consider Non-Instituted “Claims and Grounds” in...more
6/4/2018
/ Appeals ,
Dismissals ,
Estoppel ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Partial Institution ,
Patent Trial and Appeal Board ,
Patents ,
Remand ,
SAS Institute Inc. v Iancu ,
Waivers
By a majority of 7-2, the Supreme Court has ruled that inter partes review is a valid exercise of statutory authority vested in the Patent Trial and Appeal Board. Oil States Energy Services, LLC v. Greene’s Energy Group, LLC,...more
4/25/2018
/ Article III ,
Constitutional Challenges ,
Due Process ,
Franchises ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Private Property ,
SCOTUS ,
Seventh Amendment ,
Takings Clause
The Supreme Court has ruled by a narrow majority of 5-4 that the Patent Office’s regulation allowing for partial institution decisions in inter partes review is foreclosed by the text of 35 U.S.C. § 318(a). SAS Institute Inc....more
4/25/2018
/ Administrative Procedure ,
America Invents Act ,
Chevron Deference ,
Constitutional Challenges ,
Discretionary Functions ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc v Matal ,
SCOTUS ,
USPTO