On September 16, 2021, eleven congressional leaders (“the Signors”) sent a letter to Andrew Hirshfeld, the acting director of the United States Patent and Trademark Office (“USPTO”), requesting the USPTO to reevaluate the Patent Trial and Appeal Board’s (“PTAB”) view on discretionary denials of petitions for inter partes review (“IPR”). The Office uses discretionary denials
On April 15, 2021, the United States Patent and Trademark Office (“USPTO”) implemented the COVID-19 Prioritized Examination Pilot Program (“Pilot Program”) to fast-track ex parte appeals of products or processes subject to an applicable FDA approval for COVID-19 use.
Generally, appeals to the Patent Trial and Appeal Board (PTAB) are taken up for decision in
Last month, in January 2021, the United States Patent and Trademark Office (“USPTO”) published a memorandum (the “January 2021 Memorandum”) clarifying how it will analyze claims for indefiniteness in AIA post-grant proceedings before the Patent Trial and Appeal Board (“PTAB”), namely patented claims in PGRs and CBMs and proposed substitute claims in IPRs. Prior to
On October 20, 2020, the United States Patent and Trademark Office (“USPTO” or “Office”) published in the Federal Register “Request for Comments on Discretion To Institute Trials Before the Patent Trial and Appeal Board” seeking public comments on the appropriate considerations for instituting trials before the Patent Trial and Appeal Board (“PTAB”) under the Leahy-Smith
The United States Patent and Trademark Office (“USPTO”) announced that it considers the effects of COVID-19 (“the Coronavirus”) to be an “extraordinary situation.” Under 37 CFR 1.183, in extraordinary situations, the Director may suspend or waive any requirement of the regulations which is not a statutory requirement. Accordingly, as of the time of this writing,
Since Arthrex, Inc. v. Smith & Nephew, Inc., 941 F.3d 1320 (Fed. Cir. 2019) was decided three and a half months ago, the Federal Circuit has vacated and remanded four cases to the Patent Trial and Appeal Board (the “PTAB” or “Board”) for proceedings consistent with the decision.[1] In two of the decisions
On October 22, 2019, the USPTO published a Federal Register notice proposing changes to the rules of practice for inter partes review (“IPR”), post-grant review (“PGR”), and covered business method patents (“CBM”) (collectively “post-grant trial”) proceedings regarding burdens of persuasion for motions to amend and the patentability of substitute claims.[1]
Specifically, the Federal Register
The United States Patent and Trademark Office (“USPTO”) published the Office Patent Trial Practice Guide (“Practice Guide”) in 2012 to apprise the public of standard practices before the Patent Trial and Appeal Board (“PTAB” or “Board”) during AIA trial proceedings and to encourage consistency of procedures among panels of the Board. In order to keep
On April 18, 2019, in Dodocase VR, Inc. v. MerchSource, LLC, No. 2018-1724 (Fed. Cir. Apr. 18, 2019) (nonprecedential), the Federal Circuit affirmed the District Court for the Northern District of California, agreeing that Dodocase VR, Inc. (“Dodocase”) is entitled to a preliminary injunction against MerchSource, LLC (“MerchSource”). The preliminary injunction requires that MerchSource
On March 8, 2019, in Personal Web Technologies, LLC v. Apple, Inc., No. 2018-1599 (Fed. Cir. Mar. 8, 2019) the Federal Circuit reversed the Patent Trial and Appeals Board’s (the “Board” or “the PTAB”) cancellation of U.S. Patent No. 7,802,310 (“the ’310 patent”) based on inherent obviousness in an inter partes review (“IPR”). Another