On October 21, 2019, the Patent Trial and Appeal Board (“PTAB”) of the United States Patent and Trademark Office (“USPTO”) provided a Notice of Proposed Rulemaking (“NPRM”) concerning their rules of practice in allocating...more
10/31/2019
/ America Invents Act ,
Burden of Persuasion ,
Comment Period ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Notice of Proposed Rulemaking (NOPR) ,
Post-Grant Review ,
Preponderance of the Evidence ,
Public Comment ,
Rules of Practice ,
USPTO
On July 26, 2018, the Silicon Valley Regional Office of the United States Patent and Trademark Office (“USPTO”) hosted a Judicial Conference by the Patent Trial and Appeal Board (“PTAB”). During the conference, a panel of...more
8/2/2018
/ Corporate Counsel ,
Evidence ,
Evidentiary Standards ,
Inter Partes Review (IPR) Proceeding ,
Oral Argument ,
Patent Owner Preliminary Response ,
Patent Trial and Appeal Board ,
Patents ,
Printed Publications ,
Professional Conferences ,
Subject Matter Experts (SMEs) ,
USPTO ,
Young Lawyers
On June 5, 2018, Chief Judge David Ruschke and Vice Chief Judge Tim Fink of the Patent Trial and Appeals Board (PTAB) participated in a webinar providing new guidance on three topics: (1) the new claim construction standard...more
6/11/2018
/ Administrative Proceedings ,
America Invents Act ,
Claim Construction ,
Inter Partes Review (IPR) Proceeding ,
Motion to Amend ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
USPTO
In prior blog posts, we have commented on PTAB decisions terminating IPR proceedings due to the Petitioner’s failure to identify all real parties-in-interest. See blog posts on Sanction For Failing to Update Real Party In...more
3/6/2018
/ Adverse Judgments ,
Burden-Shifting ,
Discovery ,
Evidence ,
Federal Rules of Evidence ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Real Party in Interest ,
Statutory Requirements
In prior blog postings, we have commented on PTAB decisions regarding the standards for demonstrating inherent obviousness. Practitioners should also be aware of a recent Federal Circuit decision clarifying the test is...more
On November 20, 2017, a district court denied a defendant’s Federal Rules of Civil Procedure (“Rule”) 12(b)(6) motion that sought to dismiss the case on the ground that the asserted patents were ineligible under 35 U.S.C. §...more
12/18/2017
/ Abstract Ideas ,
Claim Construction ,
CLS Bank v Alice Corp ,
Computer-Related Inventions ,
Federal Rule 12(b)(6) ,
Inter Partes Review (IPR) Proceeding ,
Motion to Dismiss ,
Patent Infringement ,
Patent Trial and Appeal Board ,
Patent-Eligible Subject Matter ,
Patents ,
Section 101
The PTAB may, where good cause exists, extend a trial up to six months beyond the required twelve month length pursuant to 35 U.S.C. §316(a)(11). On October 5, 2017, the PTAB issued its first “good cause” extension of a trial...more