The Federal Circuit in Voice Tech Corp. v. Unified Patents, LLC, No. 2022-2163 (Fed. Cir. Aug. 1, 2024) (Lourie, Chen, and Cunningham), affirmed the PTAB’s determination that claims of Voice Tech Corp.’s (“Voice Tech”) U.S....more
On April 16, 2024, the PTAB proposed new rules (“proposed rules”) governing the Director Review process, which would remain consistent with the Interim review process currently in place, and codify those procedures....more
In a rehearing decision issued by a Delegated Rehearing Panel specially convened by the US Patent & Trademark Office (PTO) Director, the Patent Trial & Appeal Board vacated a prior panel decision denying institution, modified...more
Precedential Decisions - Penumbra, Inc. v. RapidPulse, Inc., IPR2021-01466, Paper 34 (March 10, 2023) (designated: November 15, 2023) (regarding prior art status under AIA § 102) The Director designated as precedential...more
Recently, the Patent Trial and Appeals Board (“PTAB”) granted a request for rehearing of a decision that denied an institution of inter partes review and then instituted a trial on all the challenged claims on all the grounds...more
The Federal Circuit denied Cellect, LLC's petition for rehearing en banc of the In re Cellect case, which held that the expiration of a patent for obviousness-type double patenting ("ODP") purposes is the expiration date...more
The Patent Trial and Appeal Board granted a request for rehearing of a final written decision in which it had originally determined that the challenged were not unpatentable. On rehearing, the board found that petitioner’s...more
On Friday May 27, 2022, the Federal Circuit added another opinion to the Arthrex line of cases. As a short refresher, Arthrex was back at the Federal Circuit after being remanded to the Board for Director Review after Patent...more
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
In Qualcomm Inc. v. Intel Corp., the Federal Circuit ruled that the Patent Trial and Appeal Board violated patent owner Qualcomm’s rights under the Administrative Procedures Act (APA) by not giving it notice and a chance to...more
[co-author: Jay Bober, Summer Associate] 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...more
Earlier this month, the Patent Trial and Appeal Board granted a request for rehearing in Maxlite, Inc. v. Jiaxing Super Lighting Elec. Appl. Co., Ltd., No. IPR2020-00208, Paper 14 (P.T.A.B. June 1, 2021), thereby instituting...more
The Federal Circuit reconfirmed its interpretation of the IPR joinder rules of 35 U.S.C. § 315(c) after the panel’s rehearing in Facebook, Inc. v. Windy City Innovations, LLC, No. 2018-1400, 2020 WL 5267975 (Fed. Cir. Sept....more
In Uniloc 2017 LLC v. Hulu, LLC, Netflix, Inc. (July 22, 2020), the Federal Circuit held that the Patent Trial and Appeal Board (“the PTAB”) may consider, in its review of substitute claims proposed in an inter partes review...more
Last week, in Uniloc 2017 LLC v. Hulu, LLC, the Federal Circuit ruled that the Patent Trial and Appeal Board may consider patent eligibility under 35 U.S.C. § 101 for substitute claims. The appeal raises issues of finality...more
The Board made a rare reversal of an institution decision – turning a denial of institution into trial in Sand Revolution v . Continental Intermodal Group-Trucking, IPR2019-01393, Paper 24 (PTAB June 16, 2020). The denial had...more
On June 15, 2020, the Supreme Court issued an Order in Emerson Elec Emerson Electric Co., Petitioner v. SIPCO, LLC, Case 19-966, stating “Petition GRANTED. Judgment VACATED and case REMANDED for further consideration in light...more
In a rare reversal, the Patent Trial and Appeal Board (“PTAB”) reassessed the Fintiv factors in a decision on a petition for rehearing of a previous decision denying institution of an inter partes review (“IPR”). The PTAB had...more
Summary: When administrative patent judges are unconstitutionally appointed, their decisions in appeals from inter partes reexamination must be vacated, just like their decisions in inter partes review. Appellee Cisco and...more
The Precedential Opinion Panel (“POP”) of the U.S. Patent Trial and Appeal Board (“Board”) recently rejected a rehearing request from a petitioner where institution was denied because of the likelihood that a district court...more
On March 23, 2020, the Court of Appeals for the Federal Circuit ("CAFC") issued a per curiam order denying all filed petitions for rehearing en banc and panel rehearing in Arthrex, Inc. v. Smith & Nephew, Inc. No. 18-2140...more
Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., March 23, 2020). In a 62-page order and accompanying opinions, the Federal Circuit denied an en banc rehearing of the Arthrex decision from October...more
The full Federal Circuit denied rehearing in Polaris. Polaris Innovations Ltd. v. Kingston Technology Company, No. 2018-1831. As previously discussed, both the U.S. government and Polaris requested rehearing after the court...more
The availability of post-grant proceedings at the Patent Trial and Appeal Board (PTAB) has changed the face of patent litigation. This monthly digest is designed to keep you up-to-date by highlighting interesting PTAB,...more