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In a sua sponte Director Review, USPTO Director Vidal vacated an adverse judgement against Patent Owner for Patent Owner’s failure to submit a mandatory notice of information or file a preliminary response to a Petition...more
On November 6, 2023, the PTAB issued an decision instituting inter partes review of U.S. Patent No. 10,681,009 B2 (“the ’009 patent”) in Keysight Technologies, Inc. v. Centripetal Networks, Inc., IPR2022-01421, Paper 16 (PTAB...more
In a nonprecedential opinion on remand from the US Court of Appeals for the Federal Circuit and a US Patent & Trademark Office (PTO) Director-granted request for review, the Patent Trial & Appeal Board (Board) reconstrued...more
The U.S. Patent and Trademark Office (USPTO) recently instituted two of Mylan’s petitions seeking Inter Partes Review of Regeneron’s U.S. Patent No. 9,669,069 B2 (the “’069 Patent,” subject of IPR2021-00880) and U.S....more
On December 8th, the PTAB published a Final Rule, formalizing a number of PTAB practices dictated by case law and described in the current Trial Practice Guide. The one substantive change of note is the removal to deference...more
One of the most notable recent changes in post-grant proceedings was replacing the broadest reasonable interpretation (“BRI”) claim construction standard with the Phillips standard used to construe claims in federal court....more
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
Finjan, Inc. v. Cisco Systems, Inc., Case No. 17-cv-00072-BLF (N.D. Cal. Sept. 13, 2018), reminds us that representations to the PTAB can have consequences in district court litigation, even outside the estoppel context. ...more
On October 11, 2018, the United States Patent and Trademark Office (USPTO) published notice of a final rule change adopting the claim construction standard applied by federal courts for use by the Patent Trial and Board...more
The USPTO has published a final rule, changing the claim construction standard applied during post-grant proceedings (inter partes reviews, post-grant reviews, and covered business methods reviews) before the Office’s Patent...more
The PTAB rules state that “[t]he petition and supporting evidence must be served on the patent owner at the correspondence address of record for the subject patent.” 37 C.F.R. § 42.105(a). Prompt service is important in IPRs...more
The U.S. Patent and Trademark Office (Patent Office) has issued a final rule that addresses aspects of trial practice for America Invents Act (AIA) proceedings before the Patent Trial and Appeal Board (PTAB), takes effect May...more
When a patent is challenged in an inter partes review and a final written decision has been issued, a statutory estoppel will prevent certain subsequent proceedings. The scope of the estoppel, which applies to both Patent and...more
The US Patent and Trademark Office has announced amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board that will take effect on May 2, 2016. The amendments generally adopt the rules proposed...more
On April 1, the U.S. Patent and Trademark Office (USPTO) published new rules for the increasingly popular America Invents Act (AIA) proceedings, such as inter partes reviews, covered business method reviews, and post-grant...more
On May 2, 2016, the amendments to the Rules of Practice for Trials Before the Patent Trial and Appeal Board go into effect, and apply “to all AIA petitions filed on or after the effective date and to any ongoing AIA...more
New rules give more options to patent owners and petitioners in pre-institution phase. On March 31, 2016, the Patent and Trademark Office (PTO) issued new final rules to govern practice before the Patent Trial and Appeal...more
On March 31, 2016, the United States Patent & Trademark Office (USPTO) issued new final rules to make targeted modifications to the existing consolidated set of rules implementing provisions of the Leahy-Smith America Invents...more
The United States Patent and Trademark Office (USPTO) has released the final set of the latest round of changes to the rules governing inter partes review, post grant review, and other AIA trial proceedings before the Patent...more
Today, the U.S. Patent and Trademark Office (USPTO) published in the Federal Register a final rule to amend the existing rules of practice for inter partes review, post-grant review, the transitional program for covered...more
Early last year, the USPTO released a set of “quick fix” changes to AIA trial procedures before the Patent Trial and Appeal Board (PTAB). On August 20, 2015, the USPTO proposed a second set of rule changes that addressed more...more
On March 31, 2016, the USPTO released its long-awaited package of rules for AIA post-grant proceedings. The final rules largely track the proposed rules (see “USPTO Proposes Extensive Changes to AIA Post-Grant Proceedings” to...more
Last year, then Federal Circuit Chief Judge Randall R. Rader referred to the Patent Trial and Appeal Board (the “PTAB”) as a “death squad,” a view not shared by the PTAB. The focus of this blog is to look at the latest trends...more
In an order perhaps indicating that the tide is turning for patent owners seeking to amend claims in inter partes review (IPR), an expanded panel of the Patent Trial and Appeal Board (PTAB or Board) provided clarification as...more
On August 19, 2015, the U.S. Patent and Trademark Office (USPTO) published a proposal to amend the existing rules of practice for inter partes review (IPR), post-grant review (PGR), the transitional program for covered...more