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Patent Trial and Appeal Board Evidentiary Standards

Jones Day

Undated Screenshot Insufficient to Prove Public Accessibility of GitHub Repository

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In AO Kaspersky Lab v. Open Text Inc., the PTAB denied inter partes review after determining that a screenshot of a GitHub repository was insufficient to establish that a whitepaper posted to that repository qualified as a...more

Jones Day

Expectation of Success Analysis Need Not Be Separate

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In Elekta Limited v. Zap Surgical Systems, Inc., the Federal Circuit recently affirmed a PTAB decision finding certain claims of a patent owned by Elekta Limited (“Elekta”) to be unpatentable, even though the PTAB decision...more

Fitch, Even, Tabin & Flannery LLP

Federal Circuit Warns Against Patent Owner Sandbagging in IPR Claim Construction

On August 7, in Axonics, Inc. v. Medtronic, Inc., the Federal Circuit held that the Patent Trial and Appeal Board (PTAB) was required to consider an inter partes review (IPR) petitioner’s arguments that were raised for the...more

Troutman Pepper

Printed Publications in Post-Grant Reviews

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GRÜNENTHAL GMBH v. ANTECIP BIOVENTURES II LLC, PGR2019-00026, -00027, 00028 (PTAB, July 28, 2020) - The PTAB issued decisions in a trio of post-grant reviews. One of the defenses put forward by the Patent Owner was that...more

Jones Day

June Boardside Chat: New Developments in AIA Trials

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On June 11, 2020, the Patent Trial and Appeal Board (PTAB) held a Boardside Chat webinar to discuss new developments in AIA trials. The discussion featured panelists Vice Chief Judge Michael Tierney and Lead Judge William...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

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

2019 PTAB Year in Review: Analysis & Trends: The PTAB’s Evolving Evidentiary Standards: Printed Publications at the Institution...

The PTAB’s evolving evidentiary standards often perplex petitioners and patent owners.  Historically, significant party effort has gone into attempting to establish that non-patent literature, such as articles, textbooks,...more

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

2019 PTAB Year in Review: Analysis & Trends

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

Knobbe Martens

PTAB’s New Informative Decisions Remind IPR Petitioners of Need for Well-Developed Rationale for Combining References

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On December 11, 2019, the PTAB designated two additional decisions as “informative.”  Such informative decisions are not binding on subsequent panels, but are meant to provide guidance on recurring issues encountered by PTAB...more

Mintz - Intellectual Property Viewpoints

Copy Cats: Evidence of Copying a Specific Product NOT Required

On October 30, 2019, the Federal Circuit held that evidence of copying may be used to rebut an obviousness challenge, even if that evidence does not relate to the copying of a specific product. (Liqwd, Inc. v. L’Oreal USA,...more

Jones Day

IPR Goes Forward Despite Late Stage Parallel ITC Investigation

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Since their inception as part of the AIA, inter partes reviews (IPRs) have been a favorite tool in the arsenal of patent challengers. Their statutorily mandated 18-month schedule oftentimes allows the PTAB to resolve a...more

Jones Day

PTAB Bar Association Annual Conference Agenda Set

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The 2019 PTAB Bar Association Annual Conference will take place March 14 – 15, 2019, at the Ritz-Carlton in Washington, D.C. Pre-conference sessions will be offered March 13. The conference will bring together practitioners,...more

Foley & Lardner LLP

Challenging IPR Institutions Following Federal Court Decision in In re: Power Integrations Inc.

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Practitioners should be aware that challenging the PTAB’s decision to deny institution of an IPR got even harder after a recent Federal Circuit decision. While the Supreme Court has already made clear that challenges to...more

Jones Day

Practical Tips from the Judges’ Panel at the PTAB Judicial Conference

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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

Snell & Wilmer

Federal Circuit Holds GoPro’s Catalog Qualifies as a Printed Publication

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Earlier today, the Federal Circuit released a decision concerning what constitutes a printed publication in GoPro Inc. v. Contour IP Holding LLC. The court reversed the Patent Trial and Appeal Board (“PTAB”) and held that...more

Jones Day

No Showing that Conference Poster Constituted a Printed Publication

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With the universe of prior art available for IPRs being limited to patents and printed publications (35 U.S.C. § 311(b)), questions regarding the applicability of printed material that might be considered less mainstream...more

Jones Day

When is a Conference Paper Publicly Accessible: Lessons Learned

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In Power Integrations, Inc. v. Semiconductor Components Industries, LLC, the PTAB provided new guidance to practitioners regarding the eligibility of conference papers as printed publications for use as prior art references...more

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