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
Parallel proceedings before the USPTO Patent Trial and Appeal Board (PTAB) are a common feature of district court litigation, and it is common for the factual records to overlap between these tribunals. As a result, questions...more
[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
[co-author: Jamie Dohopolski]
Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more
2/9/2022
/ § 314(d) ,
35 U.S.C. §315(e)(1) ,
Absolute Intervening Rights Doctrine ,
Abuse of Discretion ,
Administrative Patent Judges ,
Administrative Procedure Act ,
America Invents Act ,
Appeals ,
Appointments Clause ,
Arbitrary and Capricious ,
Article of Manufacture ,
Assignor Estoppel ,
Burden of Proof ,
Claim Construction ,
Collateral Estoppel ,
Commercial Success ,
Confidential Information ,
Constitutional Challenges ,
Demand Letter ,
Denial of Institution ,
Design Patent ,
Director of the USPTO ,
Dismissals ,
Doctrine of Prosecution Disclaimer ,
Due Process ,
Equitable Estoppel ,
Estoppel ,
Evidence ,
Ex Partes Reexamination ,
Executive Branch ,
Executive Powers ,
Federal Rules of Evidence ,
Final Written Decisions ,
Forum Selection ,
FRCP 52(c) ,
GATT ,
Inferior Officers ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Inter Partes Reexamination ,
Inter Partes Review (IPR) Proceeding ,
International Trade Commission (ITC) ,
Intervening Acts ,
Inventions ,
Issue Preclusion ,
Judicial Review ,
Lack of Authority ,
Lack of Jurisdiction ,
Likelihood of Success ,
Minerva Surgical Inc. v Hologic Inc. ,
Motion for Summary Judgment ,
Motivation to Combine ,
Nexus ,
Non-Disclosure Agreement ,
Nonobvious ,
Obviousness ,
Ornamental Design ,
Parallel Proceedings ,
Patent Applications ,
Patent Filings ,
Patent Infringement ,
Patent Litigation ,
Patent Prosecution ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Petition for Writ of Certiorari ,
Pharmaceutical Patents ,
Post-Grant Review ,
Pre-GATT ,
Preliminary Injunctions ,
Principle Officers ,
Printed Publications ,
Prior Art ,
Real Party in Interest ,
Remand ,
Reversal ,
Rule 36 ,
Scope of Review ,
SCOTUS ,
Section 325(d) ,
Sua Sponte ,
Substantial Evidence ,
Totality of Evidence ,
United States v Arthrex Inc ,
USPTO ,
Vacated ,
Writ of Mandamus
In Thryv, Inc v. Click-To-Call Technologies, LP, 140 S. Ct. 1367 (2020), the Supreme Court held that patent owners cannot appeal determinations by the Patent Trial and Appeal Board declining to apply the time bar of 35 U.S.C....more
2/19/2021
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
In Thryv, Inc. v. Click-to-Call Technologies, LP the Supreme Court held, 7-2, that patent owners cannot appeal determinations by the Patent Trial and Appeal Board (PTAB) declining to apply the time-bar of 35 U.S.C. § 315(b)....more
4/21/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Cuozzo Speed Technologies v Lee ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
When Congress created inter partes review (“IPR”) proceedings in the Leahy-Smith America Invents Act, it included an estoppel provision to avoid duplicative validity challenges against the same patent claims.1 As set forth in...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
3/3/2020
/ Administrative Patent Judges ,
America Invents Act ,
Estoppel ,
Follow-On Patent Petitions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Discretion ,
Litigation Strategies ,
Motion to Amend ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
USPTO
AVX Corporation, a company that manufactures and sells a variety of electronic components including capacitors, petitioned for inter partes review (IPR) of Presidio Components, Inc.’s patent directed to single-layer ceramic...more
2/18/2020
/ Appeals ,
Article III ,
Estoppel ,
Final Written Decisions ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Standing ,
Subsequent Litigation
GEP Power Products, Inc. petitioned for inter partes review (IPR) of two patents owned by Arctic Cat Inc. directed to an electrical-connection box for distributing power to various electrical components, including components...more
This document provides a factual overview of the Federal Circuit’s decision in Arthrex v. Smith & Nephew, discusses the court’s remedy, and addresses implications for litigants with Patent Trial and Appeal Board cases pending...more
12/3/2019
/ Administrative Patent Judges ,
Administrative Procedure Act ,
Appeals ,
Appointments Clause ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Patent Trial and Appeal Board ,
Patents ,
Pending Litigation ,
Post-Grant Review ,
Removal At-Will ,
Secretary of Commerce ,
Senate Confirmation Hearings ,
Severability Doctrine
In BioDelivery Sciences Int’l v. Aquestive Therapeutics, Inc., the Federal Circuit confirmed that the PTAB has broad discretion to reconsider institution decisions and terminate instituted proceedings even after trial has...more
10/1/2019
/ Administrative Reconsideration ,
Appeals ,
Inter Partes Review (IPR) Proceeding ,
Non-Appealable Decisions ,
Partial Institution ,
Patent Invalidity ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Trial Order ,
Prosecutorial Discretion ,
SAS Institute Inc. v Iancu ,
Vacated
Federal Circuit clarifies that a post-filing change in RPI status can trigger the § 315(b) time-bar and that there are exceptions to issue preclusion in IPR appeals -
On June 13, 2019, the Court of Appeals for the Federal...more
6/14/2019
/ § 315(b) ,
Appeals ,
Collateral Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Issue Preclusion ,
Mergers ,
Patent Filings ,
Patent Trial and Appeal Board ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Time-Barred Claims
On March 13, 2018, the U.S. Patent and Trademark Office Patent Trial and Appeal Board (PTAB)’s Precedential Opinion Panel (POP), consisting of Director Andrei Iancu, Commissioner of Patents Drew Hirshfeld, and newly appointed...more
3/14/2019
/ § 315(b) ,
Administrative Procedure ,
Administrative Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Joinder ,
Judicial Discretion ,
Litigation Strategies ,
Patent Trial and Appeal Board ,
Patents ,
Petition For Rehearing ,
Precedential Opinion ,
Time-Barred Claims
Broadcom sought inter partes review of three patents owned by Wi-Fi One. In response to Broadcom’s petitions, Wi-Fi One argued that the IPR was barred under 35 U.S.C. § 315(b) because Broadcom was in privity with certain...more
3/11/2019
/ § 315(b) ,
Administrative Proceedings ,
Appeals ,
En Banc Review ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patents ,
Privity of Contract ,
Real Party in Interest ,
Reversal ,
Time-Barred Claims ,
USPTO ,
Wi-Fi One
SAS sought an inter partes review (IPR) of ComplementSoft’s patent. In its petition, SAS alleged that all of the patent’s claims were unpatentable. The PTAB determined to institute trial on some, but not all, of the...more
3/8/2019
/ America Invents Act ,
Constitutional Challenges ,
Final Written Decisions ,
Inter Partes Review (IPR) Proceeding ,
Partial Institution ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
In 2018, the U.S. Court of Appeals for the Federal Circuit docketed close to 600 appeals from the U.S. Patent and Trademark Office (USPTO). That is the second highest number since starting to hear post-American Invents Act...more
2/28/2019
/ § 315(b) ,
Adverse Judgments ,
Appeals ,
Article III ,
Assignor Estoppel ,
Burden of Proof ,
Burden-Shifting ,
Claim Construction ,
Collateral Estoppel ,
Corporate Counsel ,
Doctrine of Prosecution Disclaimer ,
Estoppel ,
Final Written Decisions ,
Injury-in-Fact ,
Inter Partes Review (IPR) Proceeding ,
Inventors ,
Non-Appealable Decisions ,
Non-Practicing Entities ,
Obviousness ,
Oil States Energy Services v Greene's Energy Group ,
Partial Institution ,
Patent Litigation ,
Patent Owner Preliminary Response ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Precedential Opinion ,
Printed Publications ,
Prior Art ,
Private Property ,
Public Rights Doctrine ,
Real Party in Interest ,
Right to a Jury ,
Right To Appeal ,
SAS Institute Inc. v Iancu ,
Section 101 ,
Section 102 ,
Section 103 ,
Seventh Amendment ,
Sovereign Immunity ,
Standing ,
Time-Barred Claims
Eleven of thirteen cannabis patent claims survive PTAB challenge.
Insys Development Company, Inc. filed a petition requesting inter partes review of claims 1-13 of GW Pharmaceutical Ltd.’s patent directed to the use of...more
1/28/2019
/ Biopharmaceutical ,
Cannabidiol (CBD) oil ,
FDA Approval ,
Hemp ,
Inter Partes Review (IPR) Proceeding ,
Marijuana ,
Obviousness ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Pharmaceutical Patents ,
Prior Art
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
The Federal Circuit issued the fifth precedential decision involving the one year time-bar 35 U.S.C. § 315(b) since the issue became reviewable earlier this year in the wake of Wi-Fi One....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
In 2016, the US Court of Appeals for the Federal Circuit docketed more appeals from the US Patent and Trademark Office (PTO) than any other venue—a first in its over 30-year history. The post grant proceedings created by the...more
3/19/2018
/ § 315(b) ,
Administrative Procedure ,
Administrative Procedure Act ,
America Invents Act ,
Anticipation ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Burden of Persuasion ,
Burden of Proof ,
Claim Amendments ,
Claim Construction ,
Due Process ,
Ex Partes Reexamination ,
Expert Testimony ,
Final Written Decisions ,
Incorporation by Reference ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Notice Requirements ,
Obviousness ,
Patent Invalidity ,
Patent Trial and Appeal Board ,
Patent Validity ,
Patents ,
Preponderance of the Evidence ,
Prior Art ,
Reaffirmation ,
Remand ,
Reversal ,
Substantial Evidence Standard ,
Vacated