News & Analysis as of

Patent Litigation Administrative Procedure Patent Trial and Appeal Board

Fenwick & West LLP

USPTO Issues New Rules Governing MTA Practice and Procedures at PTAB

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The United States Patent and Trademark Office (USPTO) has announced new rules governing amendment practice in trial proceedings under the America Invents Act (AIA), making certain provisions of the motion to amend pilot...more

Fish & Richardson

USPTO Issues Proposed Rules on Discretionary Denial in PTAB Proceedings

Fish & Richardson on

One year ago, the United States Patent and Trademark Office (USPTO) issued an Advance Notice of Proposed Rulemaking (ANPRM) that set forth several ideas related to America Invents Act (AIA) proceedings before the Patent Trial...more

WilmerHale

PTAB/USPTO Update - August 2023

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USPTO News - On July 11, the USPTO Office of the Chief Economist released the 2022 updates to its Trademark Case Files Dataset and Trademark Assignment Dataset....more

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

Global Patent Prosecution - August 2020: Survey of PTAB and CNIPA Proceedings in View of Proposed Regulations Regarding...

In April, the Supreme People’s Court of China published a draft for comment for “Provisions of the Supreme People’s Court on Several Issues Concerning the Trial of Administrative Cases Involving Patent Authorization and...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

Smith & Nephew File Certiorari Petition in Arthrex Case

While the Federal Circuit's decision last fall in Arthrex, Inc. v. Smith & Nephew, Inc. raised issues about the appointment of Administrative Patent Judges (APJs) serving on the Patent Trial and Appeal Board (PTAB), it should...more

Foley & Lardner LLP

PTAB Precedential 35 U.S.C. 315(b) Decisions Show Service in Dismissed Infringement Cases Can Still Bar IPR Institution

Foley & Lardner LLP on

The PTAB recently designated two decisions interpreting 35 U.S.C. § 315(b) as precedential. Each decision applies the Federal Circuit’s literalist interpretation of § 315(b) from Click-to-Call (CTC) to, in one...more

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

IP Hot Topic: USPTO Releases a Second Update to the PTAB Trial Practice Guide

On July 15, 2019, the USPTO released a second update to Trial Practice Guide for AIA proceedings. The 64-page update reflects some of the recent opinions that the Board has designated as precedential and includes helpful...more

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

PTAB Strategies and Insights - March 2019

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

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

PTAB Strategies and Insights - December 2018: Proposed New Motion to Amend Procedure Gives Patent Owners a Fighting Chance at...

With their proposed new procedure, the USPTO hopes to make claim amendments via a motion to amend more of a reality for patent owners in PTAB trials....more

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

PTAB Strategies and Insights - November 2018: Proposed New Motion to Amend Procedure

Despite changing claim construction to district court standard, where BRI had always been premised on the patent owners ability to amend, it appears the USPTO is responding to a half-decade of negative comments from the...more

Knobbe Martens

Recent Update on Patent Trial Practice Guide

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The United States Patent and Trademark Office (USPTO) published an update to the AIA Trial Practice Guide (‘‘Trial Practice Guide’’) in August 2018 to revise guidance on practices before the Patent Trial and Appeal Board...more

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

PTAB Strategies and Insights - July 2018: 5 Informative Decisions From The PTAB

On July 10, 2018, the PTAB informed the patent bar that they designated five decisions as informative for: issue preclusion; use of and versus or when referencing lists; DJ bar for joinder cases; depositions in foreign...more

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

PTAB Strategies and Insights - June 2018

The PTAB Strategies and Insights newsletter provides timely updates and insights into how best to handle post-grant proceedings at the USPTO's Patent Trial and Appeal Board. It is designed to increase return on investment for...more

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

PTAB Issues New Standard Operating Procedure Addressing Remands from Federal Circuit: The New Standards and How They May Affect...

On November 16, 2017 the U.S. Patent and Trademark Office posted a new Standard Operating Procedure (SOP) addressing the conduct of cases remanded from the Federal Circuit to the Patent Trial and Appeal Board (PTAB). New “SOP...more

Jones Day

PTAB Denies Joinder of IPR Petitioner That Won’t Take “Silent Understudy” Role

Jones Day on

In orders entered July 10 and 12, 2017, the PTAB instituted further inter partes review (IPR) of six Allergan Inc. (“Allergan”) patents relating to cyclosporine compositions. Each of U.S. Patent Nos. 8,633,162, 8,685,930,...more

Nutter McClennen & Fish LLP

PTAB Procedural Reform Initiative: Will the PTAB Become More Patent-Friendly?

Changes may be coming to Patent Trial and Appeal Board (PTAB) proceedings. The United States Patent and Trademark Office (USPTO) announced recently that it is launching an initiative to reform PTAB proceeding rules. The...more

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