Pending Reexamination Causes Denial of IPR Petition Under § 325(d)
In Fox Factory, Inc. v. SRAM, LLC, the Patent Trial and Appeal Board (PTAB) exercised its discretion to deny institution…
PTAB Issues Guidance on Motions to Amend in View of Aqua Products
The Patent Trial and Appeal Board (“PTAB” or “Board”) recently issued guidance on motions to amend in AIA trial proceedings…
Current Public Availability of a Drug Label Does Not Demonstrate Public Availability at an Earlier Critical Date
In inter partes review (IPR) proceedings, petitioners bear the burden of demonstrating that documents relied on as printed publications were…
PTAB Issues Guidance on Remand Procedures
On November 15, 2017, the Patent Trial and Appeal Board (PTAB) published a revised Standard Operating Procedure 9 (“SOP 9”)…
AIA Trial Fees to Increase Substantially
On November 14, 2017, the United States Patent and Trademark Office (USPTO) published a final rule on fee increases that…
The PTAB Establishes Standards for Exercising Discretion to Deny Institution Under § 314(a) and § 325(d)
In AIA post-grant proceedings, petitioners occasionally present challenges based on prior art or argumentation that was previously presented to the…
For the First Time, PTAB Extends One-Year Period to Issue Final Written Decision
By statute, the Patent Trial and Appeal Board (PTAB) is required to issue a final written decision within one year…
Federal Circuit Shifts Burdens for Motions to Amend
On October 4, 2017, the Federal Circuit, sitting en banc, issued its long-awaited decision in Aqua Products, Inc. v. Matal.…
Todd Walters Participates in Fireside Chat with Chief Judge of PTAB
On Tuesday, September 12, 2017, the Patent Trial & Appeal Board (PTAB) conducted a special “Boardside Chat” webinar with Chief…
Assignor Estoppel Is Not a Defense in AIA Trials
Recently, the PTAB designated the following decision as precedential: Athena Automation Ltd. v. Husky Injection Molding Sys. Ltd., IPR2013-00290, Paper…
The Federal Circuit Clarifies Notice Requirements in AIA Trials
In EmeraChem Holdings LLC v. Volkswagen Group of Am. Inc., No. 2016-1984 (Fed. Cir. 2017), the Federal Circuit faulted the…
The Federal Circuit Supports the PTAB in Casting a Wider Obviousness Net
The Federal Circuit recently affirmed the Patent Trial and Appeal Board’s (“the PTAB” or “the Board”) decision invalidating Outdry Technologies…
STRONGER Patents Act Proposes Substantial Changes to AIA Trial Proceedings
On June 21, 2017, Senator Chris Coons (D-Del.) introduced the STRONGER Patents Act of 2017 in the Senate. STRONGER is…
An Early Look at the Impact of Oil States
On June 12, 2017, the Supreme Court granted certiorari in Oil States Energy Servs. LLC v. Greene’s Energy Grp., LLC,…
Buchanan’s Patent Office Litigation Team Identified as a Top 5 Performer in Defending Patents in IPR Proceedings
Patexia, an intellectual property (IP) company that performs analytical studies for IP-related issues, issued a report on June 14, 2017…
Keys to Successful Swear-Behind Attempts Before PTAB
This article was reprinted with permission from Law360. For patents subject to pre-AIA 35 U.S.C. § 102, patent owners involved…
Supreme Court Review in SAS Institute May Impact the Scope of Appealability and Estoppel in AIA Proceedings
Recently, the Supreme Court agreed to hear arguments on the question of whether the PTAB is required to issue a…
Jonathan Bowser Quoted in The Wall Street Journal & Law360 About Supreme Court’s Decision on Patent Infringement
Jonathan Bowser was quoted in The Wall Street Journal‘s article “Supreme Court Limits Where Patent-Infringement Cases Can Be Filed.” “Texas…
Supreme Court Curbs Venue Shopping in Patent Infringement Cases—Delaware Likely to See Increase in Infringement Actions
Venue Shopping Used for Decades Has Been Curtailed For the last 25 years, patent owners have taken advantage of a…
Patent Owner Comments During an IPR Can Lead to Prosecution Disclaimer — Even for Non-Instituted Claims
The doctrine of prosecution disclaimer prevents patent owners from recapturing specific meanings of claim terms that were disclaimed during prosecution.…
IPR Estoppel Update: District Courts are Questioning the Reasoning of Shaw But are Compelled to Follow It
Challenging the validity of a patent in an inter partes review (IPR) or post-grant review (PGR) does not come without…
Federal Circuit: AIA On-Sale Bar Applies Even if Details of Invention Are Not Publicly Disclosed
In reversing a previous U.S. District Court ruling, the Federal Circuit held on May 1, 2017 that entering into and…
Motions to Exclude Expert Testimony Before the PTAB Are Rarely Successful: Make Your Arguments in Substantive Responses and Replies
It is common for both petitioners and patent owners to present expert opinion testimony in post-grant proceedings before the Patent…
Antedating References at PTAB: Trends and Pitfalls
This article was reprinted with permission from Law360. Patent owners generally face unfavorable odds in attempting to antedate references in…
Federal Circuit Holds that the PTAB and District Courts May Reach Different Conclusions
Recently, the Federal Circuit confirmed that it is permissible for the district courts and the Patent Trial and Appeal Board…
Managing IP Recognizes Patent Office Litigation Attorneys as 2017 IP Stars
Managing Intellectual Property has recognized 12 Patent Office Litigation attorneys as 2017 IP Stars
Federal Circuit Vacates PTAB Decision Based on Overly Broad Claim Constructions
In Los Angeles Biomedical Research Institute v. Eli Lilly and Co., No. 2016-1518, the Federal Circuit vacated the Patent Trial…
Means-Plus-Function Trends at PTAB
This article was reprinted with permission from Law360. In inter partes review proceedings, petitioners are required to indicate how the…
Discovery of Secondary Considerations Information at PTAB
This article was reprinted with permission from Law360. The Patent Trial and Appeal Board’s rules allow parties to request discovery…
Under the Same Precedent, Different Estoppel Standards Have Developed in the PTAB and the District Courts
Estoppel from inter partes review (IPR) or post-grant review (PGR) prevents the petitioner from raising or maintaining a ground of…
Federal Circuit Vacates PTAB’s Obviousness Determination Due to “Inadequate” Rationale
On February 14, 2017, the Federal Circuit vacated an obviousness determination by a panel of the Patent Trial and Appeal…
Erin Dunston Receives 2017 Lexology Client Choice Award for IP-Patents Category in Virginia
Shareholder Erin Dunston has been named the exclusive winner of the Intellectual Property – Patents category for Virginia by Lexology…
District Court Finds Decision Not to Institute Indicative of Weak Invalidity Case on Summary Judgment
The United States District Court for the Middle District of North Carolina recently granted summary judgment dismissing defendant’s invalidity claims,…
4 PTAB Lessons on Scope of On-Sale Prior Art
This article was reprinted with permission from Law360. Petitioners in post-grant review and covered business method proceedings under the America…
PTAB Declares that State-Owned Patents are Immune from IPR Challenges
A panel of the Patent Trial and Appeal Board (PTAB) recently issued a decision that could significantly strengthen patent portfolios…
Buchanan Draws from Its In-Depth Post-Grant Experience to Defeat Patentability Challenges Filed Against Medical Components, Inc.
Faced with numerous challenges against two of their medical device patents, firm client Medical Components, Inc. relied on Buchanan’s specialty…
PTAB Final Written Decision Not Binding in Federal Circuit Review of Preliminary Injunction Award
The interplay between infringement actions brought in district court and parallel USPTO post-grant proceedings can lead to interesting outcomes. One…
PTAB Denies Institution of 6 Out of 6 IPR Petitions
GlaxoSmithKline LLC (GSK) filed six inter partes review (IPR) petitions to challenge the patentability of U.S. Patent Nos. 8,466,172; 8,609,646;…
Federal Circuit to Reconsider Appealability of Time-Bar Determinations in Institution Decisions
On January 4, 2017, the Federal Circuit agreed to reconsider en banc a panel decision in Wi-Fi One, LLC v.…