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IPRs & Other Post Grant Proceedings

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Fate of PTAB Judges and Decisions Now in Hands of Supreme Court

October 15, 2020 | Blog | By Michael Renaud, William Meunier, Monique Winters Macek

On October 13, 2020, the U.S. Supreme Court granted three petitions for writ of certiorari related to Arthrex v. Smith & Nephew addressing two issues that will determine the fate of PTAB judges and decisions.
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Federal Circuit Reminds PTAB That Short Cuts Are Not Allowed

August 11, 2020 | Blog | By Brad M Scheller, Vincent Ferraro

Last month, in a precedential decision, the Federal Circuit vacated-in-part and remanded the Patent Trial and Appeal Board’s (“Board”) obviousness determination regarding Alacritech’s computer networking patent because the Board failed to adequately explain its findings for three of the challenged claims.
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Yesterday we discussed the Federal Circuit’s decision in Uniloc 2017 LLC v. Hulu, LLC  confirming the Board’s authority to review contingent substitute claims after the original claims have been held invalid by a federal court.  Today we cover the panel’s ruling that the Board can use any patentability requirement to evaluate and reject proposed substitute claims in an IPR, notwithstanding that originally-petitioned claims in such proceedings can only be challenged under §§ 102 and 103 based on prior patents and printed publications.
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Last week a Federal Circuit panel in Uniloc 2017 LLC v. Hulu, LLC issued an important decision regarding inter partes review (IPR) before the Patent Trial and Appeal Board on two questions concerning contingent motions to amend—(i) whether the Office has statutory authority to review the patentability of substitute claims after a final federal-court judgement of invalidity of those claims and, if yes, (ii) whether that review of patentability may include analyzing the substitute claims for patent eligibility under 35 U.S.C. § 101. 
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IPR and Fast-Moving District Court Litigation: PTAB Formalizes the Analysis for Balancing Efficiency and Fairness

July 17, 2020 | Blog | By Michael Renaud, Daniel Weinger, Adam Rizk, Serge Subach

The Patent Trial and Appeal Board (“PTAB”) has designated two key institution decisions as “Informative.”  With these informative decisions, the PTAB has provided guidance on how the PTAB will apply efficiency and fairness factors that guide decisions to institute an inter partes review (“IPR”) when there is a fast-moving parallel district court litigation that may reach trial before the PTAB’s final written decision would be due.
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Intellectual Property Viewpoints Thumbnail

Shifting “Sands”: New Facts on the Ground Justify Institution of a Previously-Denied IPR

June 25, 2020 | Blog | By Michael Renaud, Adam Rizk, Daniel Weinger, Serge Subach

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”).  
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PTAB Designates As Informative a Decision Instituting Post-Grant Review for a Design Patent Lacking Ornamentality

June 16, 2020 | Blog | By Brad M Scheller, Vincent Ferraro, Meena Seralathan

On June 11, 2020, the Patent Trial and Appeal Board (“PTAB”) designated as informative a July 26, 2019 institution decision granting post-grant review of a design patent for lacking ornamentality. In this ruling, the PTAB provides insight into how it analyzes the unpatentability of a design patent due to lack of ornamentality in post-grant proceedings at the institution stage.
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Intellectual Property Viewpoints Thumbnail
The Patent Trial and Appeal Board (“PTAB”) recently sent a warning to alleged infringers not to wait for the one year deadline to file IPR petitions, or risk discretionary denial.  On May 13, 2020, the PTAB exercised its discretion to deny institution of an inter partes review (“IPR”) petition filed by Apple due to the advanced state of a parallel district court litigation in the Western District of Texas.
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Federal Circuit Narrows Availability for IPR Appeals Under Arthrex

May 14, 2020 | Blog | By Marc Morley, Jeff Giering

By recognizing a constitutional deficiency in the appointment of Patent Trial and Appeal Board (“PTAB”) judges, the Federal Circuit in Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) set the stage for numerous appeals by parties unhappy with a PTAB decision and seeking a do-over with a new panel. 
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PTAB Presses Pause On All Arthrex Remands

May 12, 2020 | Blog | By William Meunier, Daniel Weinger, Vincent Ferraro, Matthew Galica

On Friday, May 1, 2020, Chief Administrative Patent Judge Scott R. Boalick of the Patent Trial and Appeal Board (“PTAB”) paused all activity in the significant number of PTAB cases remanded to it from the Federal Circuit under Arthrex (discussed here). 
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Intellectual Property Viewpoints Thumbnail
On May 5, 2020, the Patent Trial and Appeal Board (“PTAB”) designated one decision as precedential and removed the precedential designation on another. The newly-designated precedential opinion lays out factors that the PTAB considers when asked to exercise its discretion to deny institution in light of an imminent trial.
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Intellectual Property Viewpoints Thumbnail
Last week, the Federal Circuit, in a precedential decision, reinforced that an accused infringer can be a “prevailing party” for the purposes of seeking attorneys’ fees under 35 U.S.C. § 285 when it successfully invalidates the asserted patent at the Patent Trial and Appeal Board (“PTAB”). 
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Federal Circuit Finds IPRs Can Circumvent Assignor Estoppel

April 27, 2020 | Blog | By Daniel Weinger, Vincent Ferraro, Kara E. Grogan

On Wednesday, the Federal Circuit held that while assignor estoppel is applicable in district court proceedings, petitions for inter partes review continue to not be subject to the equitable remedy.  Assignor estoppel is an equitable doctrine based on the principle of fair dealing that prevents a party who divests a patent from later challenging the validity of that patent.
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SCOTUS holds that PTAB Time-Bar Determinations are Not Reviewable on Appeal

April 22, 2020 | Blog | By Michael Newman, Serge Subach, Rithika Kulathila

On Monday, in Thryv, Inc. v. Click-to-Cal Technologies, the Supreme Court held that § 315(b) time-bar determinations are not subject to judicial review. In this 7-2 decision penned by Justice Ginsburg, with Justices Gorsuch and Sotomayor dissenting, the Court determined that time-bar determinations are unreviewable because they are “closely tied” to the Director’s decision to institute an inter partes review (IPR).
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Intellectual Property Viewpoints Thumbnail
Last week, the Patent Trial and Appeal Board (“PTAB”) designated a January 24, 2020 decision, finding objective indicia of nonobviousness, such as evidence of long-felt need and industry praise, saved a patent owner’s amended claims from invalidation, as precedential.
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Informative Whirlpool Decision Reaffirms Importance of Secondary Considerations

April 21, 2020 | Blog | By Brad M Scheller, Courtney Herndon

Recently on April 14, 2020, the Patent Trial and Appeal Board (“Board”) designated Ex parte Whirlpool Corp., Appeal 2013-008232 (Oct. 30, 2013) “Informative”.  In Whirlpool, the Board reversed the Examiner’s obviousness rejection of claims 1, 4, 6, and 8 of U.S. Patent No. 6,082,130 (“the ’130 patent”), finding that the Patent Owner, Whirlpool Corporation, established a nexus between its objective evidence of non-obviousness and the claimed invention. 
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On Thursday, the Federal Circuit ruled that the Patent Trial and Appeal Board (“PTAB”) must give the parties proper notice if considering a sua sponte theory of unpatentability in relation to a motion to amend.
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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 trial would occur prior to a final written decision. 
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Intellectual Property Viewpoints Thumbnail
On Tuesday, March 24, 2020, the Patent Trial and Appeal Board (“PTAB”) designated two inter partes review (“IPR”) decisions as precedential and one as informative. These decisions concern PTAB’s discretion to deny institution of an IPR under 35 U.S.C. § 325(d) and 314(a). 
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An Informative PTAB Decision on Patent Eligibility under 35 U.S.C. § 101

January 30, 2020 | Blog | By Christina Sperry, Justin J. Leisey

The U.S. Patent Trial and Appeal Board (“PTAB”) recently designated its decision in Ex Parte HANNUN (Appeal 2018-003323) (“HANNUN”) as being informative regarding the application of the latest 2019 revised guidance on patent-eligible subject matter. 
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