News & Analysis as of

Notice Requirements Patent Trial and Appeal Board

Fish & Richardson

Recapping a Busy Summer for Director Review

Fish & Richardson on

United States Patent and Trademark Office (USPTO) Director Kathi Vidal had a busy end to her summer, issuing six decisions as part of the Director Review process between July 10 and August 22. In the six decisions, the...more

McDermott Will & Emery

From Oops to Encore: The Board’s Premature Adverse Judgment

McDermott Will & Emery on

The Director of the US Patent & Trademark Office (PTO) overturned the Patent Trial & Appeal Board’s premature adverse judgment against a patent owner and remanded an inter partes review (IPR) proceeding based on the fact that...more

Haug Partners LLP

Apple v. Corephotonics: PTAB Decision Focused on Expert’s “Typographical Error” Rather than the Parties’ Arguments Violated...

Haug Partners LLP on

On September 11, 2023, the Federal Circuit issued a precedential opinion that vacated and remanded two final written decisions of the Patent Trial and Appeal Board (the “Board”) in Apple, Inc. v. Corephotonics, Ltd.. The...more

Foley & Lardner LLP

Qualcomm Prevails at Federal Circuit Based on Lack of Notice and Adequate Opportunity to Respond

Foley & Lardner LLP on

In Qualcomm Inc. v. Intel Corp., the Federal Circuit held that Qualcomm was not afforded notice of, or an adequate opportunity to respond to, the Patent Trial and Appeal Board’s (PTAB’s) novel construction of an undisputed...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - July 2020: Motions to Amend Post Hunting Titan

The Patent Trial and Appeal Board’s (PTAB) obstacles to successful motions to amend have been daunting. As published previously, filing motions to amend have historically been an exercise in futility due to their low chance...more

McDonnell Boehnen Hulbert & Berghoff LLP

Idorsia Pharmaceuticals, Ltd. v. Iancu (Fed. Cir. 2020)

This week, in Idorsia Pharmaceuticals, Ltd. v. Iancu, the Federal Circuit affirmed a decision by the U.S. District Court for the Eastern District of Virginia granting summary judgment in favor of the U.S. Patent and Trademark...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - April 2019: The Federal Circuit Clarifies The Notice Requirements Of The Administrative Procedure...

In Nike, Inc. v. Adidas AG, No. 19-1262 (Fed. Cir. Apr. 9, 2020), the Federal Circuit offered important guidance to Patent Trial and Appeal Board (PTAB) litigants regarding how the notice requirements of the Administrative...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - April 2020

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

Mintz - Intellectual Property Viewpoints

PTAB Finds that Allowing IPR Petitioner to Avoid a Statutory Bar by Retroactively Adding Missing Real Party in Interest Is “In the...

Recently, in ZTE (USA) Inc. v. Fundamental Innovation Int’l LLC, IPR2018-00425, Paper No. 34 (Feb. 6, 2019), the Patent Trial and Appeal Board (“PTAB”) allowed Petitioner’s motion to retroactively correct its defective IPR...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - January 2019: Unreviewed Filing Date Notice Dooms Petition

Petitioners beware. Your Notice of Filing date needs to be reviewed immediately – and not just the notice email, because the email does not alert petitioner to defects in filing....more

Knobbe Martens

Federal Circuit Review - December 2018

Knobbe Martens on

Assignor Estoppel Does Not Apply in the IPR Context - In Arista Networks, Inc. v. Cisco Systems, Inc., Appeal Nos. 2017-1525, 2017-1577, the Federal Circuit held that the plain language of 35 U.S.C. § 311(a) unambiguously...more

Schwabe, Williamson & Wyatt PC

Fresh From the Bench - August 2018 #2

PATENT CASE OF THE WEEK - Click-to-Call Technologies, LP v. Ingenio, Inc., Appeal No. 2015-1242 (Fed. Cir. Aug. 16, 2018) In an appeal of an inter partes review, the Federal Circuit reviewed for the first time the...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Federal Circuit Appeals from the PTAB: Summaries of Key 2017 Decisions

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

Sterne, Kessler, Goldstein & Fox P.L.L.C.

Notice - It's What's Required

The U.S. Constitution guarantees due process before a person can be deprived of life, liberty, or property. The Administrative Procedure Act (APA) enforces the due process protection in the USPTO and Board proceedings. Under...more

Sterne, Kessler, Goldstein & Fox P.L.L.C.

PTAB Strategies and Insights - January 2018

The PTAB Strategies and Insights Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both...more

Mintz - Intellectual Property Viewpoints

Federal Circuit Puts the Brakes on PTAB Final Written Decision For Procedural APA Violation

In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., the Federal Circuit reminded the PTAB that it must abide by the APA’s requirements of adequate notice and an opportunity to respond when conducting a post-grant...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genzyme Petitions Federal Circuit for Rehearing in Genzyme Therapeutic Products, Inc. v. Biomarin Pharmaceutical, Inc.

Many of the complaints from patent holders over the PTO's inter partes review process under the Leahy-Smith America Invents Act (codified in pertinent part at 35 U.S.C. §§ 311-319) stem from how the Office has implemented...more

McDonnell Boehnen Hulbert & Berghoff LLP

Genzyme Therapeutic Products Ltd. v. Biomarin Pharmaceutical Inc. (Fed. Cir. 2016)

The Federal Circuit affirmed the decision by the Patent Trial and Appeals Board (PTAB) in an inter partes review (IPR) that the claims of Genzyme's U.S Patent Nos. 7,351,410 and 7,655,226 were obvious, in Genzyme Therapeutic...more

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