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Patents Patent Trial and Appeal Board Standard of Review

Fenwick & West LLP

Understanding the Significant Changes in Vidal's Final Rule on Director Review

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The U.S. Patent and Trademark Office director, Kathi Vidal, released a final rule on Director Review effective October 31, which expands the director's authority to review a wide range of decisions made during PTAB...more

Fenwick & West LLP

Director Review in Recent Patent Cases: Focus on Substantive Issues

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Recent cases show the U.S. Patent and Trademark Office director's interest in using director review to address substantive issues like obviousness, not just procedural matters or changes in the law. Grants in these cases,...more

Jones Day

Federal Circuit Confirms PTAB Standard of Review

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The Federal Circuit in Sisvel International S.A. v. Sierra Wireless, Inc. (Fed. Cir. Sept. 1, 2023) (Prost, Reyna, and Stark) affirmed a PTAB decision finding anticipated and/or obvious certain claims of two patents directed...more

McDonnell Boehnen Hulbert & Berghoff LLP

In re Theripion (Fed. Cir. 2023)

The Patent Trial and Appeal Board (PTAB) has benefited, particularly after enactment of the Leahy-Smith America Invents Act, from the deference to its factual findings mandated by the Supreme Court's interpretation in...more

Venable LLP

PTAB Eliminates POP Review and Expands Director Review to Institution Decisions

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As of July 24, 2023, the United States Patent and Trademark Office (USPTO) revised the interim Director Review process and replaced the Precedential Opinion Panel (POP) with the Appeals Review Panel process, which will review...more

WilmerHale

Federal Circuit Patent Watch: Federal Circuit rejects invitation to abandon abuse-of-discretion standard of review in attorneys’...

WilmerHale on

Precedential Federal Circuit Opinions - ONESUBSEA IP UK LIMITED v. FMC TECHNOLOGIES, INC. [OPINION] (2022-1099, 5/23/2023) (Moore, Clevenger, and Dyk) - Clevenger, J. The Court affirmed a district court decision...more

Haug Partners LLP

Teaching Away and No Reasonable Expectation of Success Arguments Insufficient to Avoid Obviousness Affirmance by the Federal...

Haug Partners LLP on

In Trustees of Columbia University v. Illumina, Inc., the U.S. Court of Appeals for the Federal Circuit affirmed the Patent Trial and Appeals Board (“PTAB” or “Board”) decision to invalidate five patents owned by Columbia,...more

McDonnell Boehnen Hulbert & Berghoff LLP

U.S. v. Arthrex: Is Historical Practice of the USPTO Relevant?

As discussed here, the Justices asked many questions in the oral argument in Arthrex this week on both questions:  (1) whether there was an Appointments Clause defect and (2) if so, whether the Federal Circuit properly cured...more

Morrison & Foerster LLP - Federal Circuitry

Last Week in the Federal Circuit (July 27-31): Gambling on an APA Challenge

It was a moderately eventful week at the Federal Circuit as the judges geared up for their August argument session and perhaps returned from their summer vacations. The Court issued 13 opinions and 2 orders on petitions for a...more

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

2019 PTAB Year in Review: Analysis & Trends: PTAB Operation Under Phillips: Business as Usual with New Strategic Implications

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

Knobbe Martens

Arctic Cat Inc. v. GEP Power Products, Inc.

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Federal Circuit Summary - Before Prost, Reyna, Taranto. Appeal from the Patent Trial and Appeal Board. Summary: Where the preamble of a claim merely identifies an intended use and does not impose a structural...more

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

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: E.I. Dupont De Nemours & Co. v. Synvina...

DuPont petitioned for inter partes review of Synvina’s patent, which was directed to a method of oxidizing a chemical using a specific temperature range, pressure range, catalyst, and solvent. The prior art disclosed the...more

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

PTAB Strategies and Insights - October 2018

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

Hogan Lovells

Phillips claim construction standard used by U.S. Courts to now apply to PTAB proceedings

Hogan Lovells on

The United States Patent and Trademark Office (“USPTO”) has published its new Final Rule on the standard of review used in construing challenged patent claims in the Patent Trial and Appeal Board (“PTAB”). ...more

Troutman Pepper

PTAB Abandons Its Practice Of Broadly Interpreting Claims Of Challenged Patents In Favor Of Phillips Standard Of “Ordinary And...

Troutman Pepper on

In a final rule published in the Federal Register on October 11, 2018, the U.S. Patent and Trademark Office (USPTO) took a remarkable step of acknowledging unfairness in the way its Patent Trial and Appeal Board (PTAB) has...more

Shook, Hardy & Bacon L.L.P.

USPTO Changes Claim Construction Standard Used In AIA Trial Proceedings

On October 10, 2018, the United States Patent & Trademark Office (USPTO) published a final rule that changes the current “broadest reasonable interpretation” or BRI standard used in inter partes review (IPR), post grant...more

Akin Gump Strauss Hauer & Feld LLP

Federal Circuit Affirms PTAB Holding of No Interference in Fact in CRISPR Interference, Leaving Both Sides Free to License Their...

On September 10, 2018, the Federal Circuit affirmed a decision by the Patent Trial and Appeal Board (PTAB) determining that there was no interference in fact between the University of California’s (“UC”) U.S. Patent...more

Knobbe Martens

Ericsson Inc. v. Intellectual Ventures I LLC.

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Federal Circuit Summary - Before Reyna, Taranto, and Chen. Appeal from the Patent Trial and Appeal Board. Summary: The Board must consider arguments in an IPR petitioner’s reply, where the arguments expressly follow...more

Jones Day

Federal Circuit: PTAB Affirmance Estops All Pending Actions Involving Patent

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In XY, LLC v. Trans Ova Genetics, L.C., Nos. 2016-2054, 2016-2136 (Fed. Cir. May 23, 2018), an appeal from the District of Colorado, the Federal Circuit gave preclusive effect to a PTAB finding, something it has done several...more

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

PTAB Strategies and Insights - May 2018

The PTAB Strategies and Insights newsletter is designed to increase return on investment for all stakeholders looking at the entire patent life cycle in a global portfolio. This month, we are please to introduce our new...more

Parker Poe Adams & Bernstein LLP

New Proposal Would Create Consistent Standard Between USPTO and District Courts for Interpreting Patent Claims

On May 8, the United States Patent and Trademark Office (USPTO) announced a proposed change to how it will handle challenges to patents. In essence, the proposal would result in a consistent claim construction standard...more

Knobbe Martens

USPTO Proposes Phillips-Type Claim Construction For Post Grant Proceedings at the PTAB

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The USPTO published a Notice of Proposed Rulemaking on May 9, 2018 seeking to change the claim construction standard for PTAB trials from the current broadest reasonable interpretation (BRI) to the claim construction standard...more

Jones Day

Proposed Rule: No More BRI in PTAB Trials

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Today, the USPTO issued a press release announcing a Notice of Proposed Rulemaking for Claim Construction Standards used in PTAB Proceedings. The rule proposed by the Office would change the prior policy of using the Broadest...more

Mintz - Intellectual Property Viewpoints

USPTO Proposes Claim Construction Rule Change from BRI to Philips in AIA Review Proceedings

The U.S. Patent and Trademark Office announced a propose change to the standard for construing both unexpired and amended patent claims in Patent Trial and Appeal Board (PTAB) proceedings under the America Invents Act...more

Jones Day

Not So Secondary: Overcoming Obviousness With Objective Indicia

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On April 2, 2018, the PTAB issued a final written decision in Fox Factory finding that the petitioner failed to carry its burden in showing the instituted claims were unpatentable as obvious. Fox Factory, Inc. v. SRAM, LLC,...more

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