Last week, Microsoft got tripped up at oral argument on the blocking and tackling of IPR practice:  making sure your prior art is prior art.

The specific error was eminently avoidable, though perhaps also eminently understandable. Under Federal Circuit law, a reference generally does not count as prior art unless it was “indexed.” (Think Dewey

Last week, four major technology companies – Apple, Cisco, Google, and Intel – brought suit against the United States Patent and Trademark Office (“USPTO”), challenging its authority to reject petitions for inter partes review (“IPR”) based on two precedential decisions by its Patent Trial and Appeal Board (“PTAB”).  The decisions, Apple Inc. v. Fintiv, Inc.

Thanks to a decision handed down by the Patent Office’s Patent Trial and Appeal Board (“PTAB”) last month, patent owners may find some difficulty in having petitions to institute inter partes review (“IPR”) dismissed based on the PTAB’s discretion under Section 314(a) of the patent act.  In Sand Revolution II, LLC v. Continental Intermodal Group

On May 27, 2020, the U.S. Patent and Trademark Office (“USPTO”) proposed amendments to its rules governing post-grant proceedings, addressing three topics.  First, petitions for post-grant proceedings would require institution of all claims or denial of the petition. Second, patent owners would be permitted to file sur-replies to principal briefs. Third, the rules would eliminate

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,

Following on the heels of the United States Patent and Trademark Office’s request for comments, the World Intellectual Property Organization (WIPO) recently released an issues paper on artificial intelligence (AI) and intellectual property (IP) policy.  Comments may be submitted by February 14, 2020.

Continue Reading World Intellectual Property Organization Weighs in on Artificial Intelligence and Intellectual Property

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

On August 22, 2019, the United States Patent and Trademark Office (USPTO) published a request for comments on patenting artificial intelligence inventions.  In addition to seeking general feedback from the public, the USPTO posed the following questions for comment:

  1. What are elements of an AI invention;
  2. How can a natural person contribute to conception

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