News & Analysis as of

Patent Trial and Appeal Board Patent Ownership Ex Partes Reexamination

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

2023 PTAB Year in Review: Analysis & Trends: Reexamination Statistics and the Federal Circuit’s SNQ Clarification/Expansion

The recent resurgence in ex parte reexamination demonstrates the importance of this post-grant review vehicle. It has become particularly important for patent challengers who may be estopped from requesting inter partes...more

Schwabe, Williamson & Wyatt PC

Latest Federal Court Cases - September 2023

In re Cellect, LLC, Appeal Nos. 2022-1293, -1294, -1295, -1296 (Fed. Cir. Aug. 28, 2023) In a significant appeal from ex parte reexamination proceedings before the Patent Trial and Appeal Board, the Federal Circuit...more

Fitch, Even, Tabin & Flannery LLP

No Standing to Appeal IPR Decision on Claim Canceled in Reexamination

On August 26, in Best Medical International, Inc. v. Elekta Inc., the Federal Circuit held that a patent owner lacked standing to appeal an inter partes review (IPR) decision as to a claim the patent owner had previously...more

Foley & Lardner LLP

PTAB’s Motion to Amend Pilot Program: Review of Initial Results

Foley & Lardner LLP on

Since the inception of inter partes reviews (IPRs) and post grant reviews (PGRs) under the America Invents Act, the option for a patent owner to file a motion to amend its claims was always present, but motions to amend were...more

Schwabe, Williamson & Wyatt PC

2017 and Early 2018 Supreme Court and Precedential Patent Cases From the Federal Circuit

Arbitration - Waymo v. Uber Technologies, 870 F.3d 1342 (Fed. Cir. 2017) - Waymo sued Uber and others for trade secret misappropriation and patent infringement. Uber contends that Waymo should be compelled to...more

Jones Day

PTAB Denies Institution Because of Pending Reexamination Considering Same Prior Art

Jones Day on

In a recent decision, the PTAB exercised its discretion under 35 U.S.C. § 325(d) to deny institution of an IPR petition that presented the same prior art before the Patent Office in a pending reexamination. Fox Factory, Inc....more

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

The Board Gives Section 325(d) Sharp Teeth—Part II – The Petitioner's Criticality to Selecting and Using The Right Prior Art

This is the second of a three-part series discussing developments around Section 325(d). Part one appeared in our October 2017 newsletter and part three will appear in our December 2017 newsletter....more

Fenwick & West LLP

An Examination “Off-Ramp” For Motions To Amend Still Raises Hopes and Questions

Fenwick & West LLP on

During the first three years of implementing the America Invents Act (AIA), Patent Trial and Appeal Board (PTAB) decision-making created a perception that a patent owner’s ability to amend claims during a post-grant...more

Foley Hoag LLP

Patenting: A Guidebook For Patenting in a Post-America Invents Act World

Foley Hoag LLP on

Patenting - Patenting generally offers a superior means for legally protecting most inventions, particularly since: • copyright, when available, does not provide a broad scope of protection; and • the...more

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