Petitioners are best served by pursuing a limited number of grounds based on the best prior art they can find. This is due in large measure to (1) the limited space Petitioner has to make its arguments, and (2) estoppel based...more
On April 26, 2018, the Patent Office issued initial guidance on the impact of the Supreme Court’s recent decision in SAS Institute Inc. v. Matal, 16-969 (Apr. 24, 2018). Two days earlier, the Supreme Court in SAS struck down...more
The Supreme Court has ruled by a narrow majority of 5-4 that the Patent Office’s regulation allowing for partial institution decisions in inter partes review is foreclosed by the text of 35 U.S.C. § 318(a). SAS Institute Inc....more
The Court will consider whether the Patent Trial and Appeal Board must determine the unpatentability of all claims challenged by petitioners, or just those claims it has instituted review on, in inter partes review...more
The PTAB’s practice of partially instituting IPRs has been in the news lately, with Jones Day recently arguing against that practice at the Supreme Court on behalf of the SAS Institute (“SAS”). On December 5, 2017, the week...more
On Monday, November 27, 2017, the Supreme Court heard oral arguments in SAS Institute v. Matal. Issue presented - Whether 35 U.S.C. § 318(a) requires that the Patent Trial and Appeal Board (PTAB or Board) issue a final...more
On November 27, 2017, the Supreme Court will hear arguments in Oil States Energy Svcs, LLC v. Greene’s Energy Group, LLC, No. 16-712 where the Court will consider the constitutionality of IPR proceedings. The Oil States case...more
The Perspectives on the PTAB Newsletter is designed to be a valuable resource for all stakeholders in the global patent arena throughout the patent life cycle. To that end, articles will provide perspectives from both sides...more