USPTO, SCOTUS, Post-Grant Review

How the Timing of Director Review May Affect Co-Pending Litigation

Fish & Richardson on 7/31/2024

Director Review at the Patent Trial and Appeal Board (PTAB) remains a hot topic in patent law. The Director first established an interim process for Director Review in the wake of the Supreme Court’s 2021 decision in United...more

Federal Circuit IP Appeals: Summaries of Key 2023 Decisions (8th Edition)

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2024

2023 saw a return to business as usual for the Federal Circuit. Oral arguments are once again in-person and open to the public, and the Court has resumed its former practice of holding occasional sittings outside of...more

What Patent Bills Would Mean for Infringement Litigation

Farella Braun + Martel LLP on 9/7/2023

Two bills recently introduced in Congress could significantly affect the current patent litigation landscape. The bipartisan bills are titled the Patent Eligibility Restoration Act of 2023 and the Promoting and Respecting...more

Federal Circuit Appeals from the PTAB and ITC: Summaries of Key 2021 Decisions

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 2/9/2022

[co-author: Jamie Dohopolski] Last year, the continued global COVID-19 pandemic forced American courts to largely continue the procedures set in place in 2020. The U.S. Court of Appeals for the Federal Circuit was no...more

Issue 34: PTAB Trial Tracker

Goodwin on 8/20/2021

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

NEWS: USPTO Issues First Director Review Decisions

Jones Day on 8/3/2021

On July 6th and 7th, the USPTO made good on its promise to not wait for a confirmed director to begin Arthrex Director reviews, issuing its first denials of review requests. The full press release is below:...more

Final IPR Decisions Now Subject To Director Review

McCarter & English, LLP on 7/6/2021

Disappointed with the final decision in your inter partes review (IPR) or post-grant review (PGR)? Under a new interim procedure, you may now seek review by the director of the U.S. Patent and Trademark Office. The Office is...more

PTO: Board to Align Indefiniteness Approach in AIA and District Court Proceedings

McDermott Will & Emery on 1/22/2021

On January 6, 2021, US Patent and Trademark Office (PTO) Director Andrei Iancu, Commissioner for Patents Andrew Hirshfeld and Chief Administrative Patent Judge Scott Boalick issued a memorandum to the members of the Patent...more

Patent Prosecution Tool Kit: The Changing Face of Non-Obviousness

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 7/22/2020

It is difficult to think of a case that has had more influence on patent practice than KSR v. Teleflex (550 U.S. 398 (2007)). In KSR, the U.S. Supreme Court rejected the established practice that an invention could not be...more

USPTO Addresses Filing Delays Caused by the Impact of COVID-19

Seyfarth Shaw LLP on 4/2/2020

While much of the focus of the Coronavirus Aid, Relief, and Economic Security (CARES) Act relates to economic stimulus, the Act also granted temporary authorization to the Director of the United States Patent and Trademark...more

2019 Report: Federal Circuit Appeals from the PTAB - Summaries of Key 2018 Decisions: SAS Institute v. Iancu, 138 S.CT. 1348...

Sterne, Kessler, Goldstein & Fox P.L.L.C. on 3/8/2019

SAS sought an inter partes review (IPR) of ComplementSoft’s patent. In its petition, SAS alleged that all of the patent’s claims were unpatentable. The PTAB determined to institute trial on some, but not all, of the...more

Supreme Court to Decide if Government Can Bring AIA Proceedings

McDonnell Boehnen Hulbert & Berghoff LLP on 10/30/2018

On Friday, October 26, 2018, the Supreme Court granted certiorari in Return Mail, Inc. v. U.S. Postal Service, in order to answer the question whether the government can bring post-grant review proceedings under the...more

When SCOTUS Said No Partial Institution, It Meant All Challenged Grounds

McDermott Will & Emery on 8/29/2018

In light of the Supreme Court of the United States decision in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), the US Court of Appeals for the Federal Circuit remanded an appeal from the Patent Trial and Appeal Board...more

Oil States v. Greene’s Energy: IPR Here to Stay, For Now

WilmerHale on 6/1/2018

The U.S. Supreme Court on April 24 issued its decision in the closely watched patent case Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, 138 S. Ct. 1365 (2018). The case addressed a constitutional challenge to...more

Observations: Three Weeks After Supreme Court’s SAS Institute Decision

Jones Day on 5/16/2018

Anyone reading this post is likely well aware that on April 24 the Supreme Court put an end to the PTAB’s practice of instituting inter partes review (IPR) on less than all claims challenged in an IPR petition in SAS...more

SAS Institute Follow-Up: New PTAB Procedures and Strategies

Latham & Watkins LLP on 5/11/2018

The PTAB’s new guidance in light of a recent Supreme Court ruling changes the dynamics for patent owners and petitioners. Key Points: ..Partial institutions are no longer permitted. The PTAB will review all petitioned...more

Review of All Claims in Petition for Inter Partes Review Required after SAS Institute

Bradley Arant Boult Cummings LLP on 5/9/2018

On the same day that the Supreme Court upheld the constitutionality of inter partes reviews, it ruled in SAS Institute Inc. v. Iancu that the United States Patent and Trademark Office wrongly implemented regulations allowing...more

Patent System after Oil States and SAS – What’s the future?

Foley & Lardner LLP on 5/7/2018

On April 24th, the Supreme Court decided two important cases related to the United States Patent & Trademark Office’s inter partes review (IPR) proceedings for reconsidering the prior grant of a patent – Oil States Energy...more

[Webinar] Supreme Court Issues Decisions in Oil States and SAS Cases: A Discussion of the Impact on Patent Law and Inter Partes...

BakerHostetler on 5/1/2018

This timely and fast-moving webinar provides insight for business leaders and legal counsel on the recently issued Supreme Court decisions in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC and SAS Institute...more

United States Patent and Trademark Office › Supreme Court of the United States › Post-Grant Review