On Friday, July 20, 2018, the Federal Circuit, in a precedential opinion, affirmed the Patent Trial and Appeal Board’s (“PTAB’s”) decision that tribal sovereign immunity does not apply in inter partes review (“IPR”) proceedings and that the U.S. Patent & Trademark Office (“USPTO” or “the Office”) has the authority to decide the validity of
Motions for Additional Discovery at the PTAB
By Nicole M. DeAbrantes on
Posted in About the PTAB
The Patent Trial and Appeal Board (“PTAB”) rarely grants motions for additional discovery filed by a party in an inter partes review (“IPR”) proceeding. Typically, a party’s motion will be denied for failing to satisfy the burden under the established factors. The PTAB has also denied motions for additional discovery where the party failed to…
Another Lesson in Timing for Disclaimers in CBM Reviews
By D. Lawson Allen on
Posted in PTAB Decisions
The Patent Trial and Appeal Board (“the Board”) recently held that Customedia Technologies, LLC (“Customedia”) could not moot the CBM proceeding with a post-institution disclaimer of the claims found to recite a financial activity element. Dish Network Corp. v. Customedia Techs., LLC, CBM2017-00023, Paper 48 at 23 (P.T.A.B. June 11, 2018).
A patent is…
PGS v. Iancu – The Post-SAS Landscape Develops
By Daniel R. McCallum & Alvin Lee on
Posted in Appellate Decisions
The Supreme Court held in SAS Institute Inc. v. Iancu, 138 S. Ct. 1348 (2018), that the Patent Trial and Appeal Board’s (“PTAB” or “the Board”) practice of so-called partial institutions was contrary to the statute. The Supreme Court explained that once an inter partes review (“IPR”) is instituted, the PTAB must decide on…
Non-Patent Literature at the PTAB
By Mark T. Rawls on
Posted in Appellate Decisions
Typically, the Patent Trial and Appeals Board (PTAB) is thought to disfavor non-patent literature—that is, “printed publications” under 35 U.S.C. § 102(b) that are not patents, patent publications, or patent applications.
To the extent that this is true, it most likely stems from the fact that members of the PTAB are, by training, used to…
Updating PTAB Strategies post-SAS Institute
By Mark T. Rawls on
Posted in About the PTAB
Following the SAS Institute decision by the Supreme Court (which we covered in a separate post on the PTAB Law blog), the U.S. Patent and Trademark Office (“PTO”) must now address every challenged claim in a trial if a trial is instituted as to any one claim. The PTO has further decided that it will…
The Future of IPRs – The US Supreme Court’s Decisions in Oil States and SAS
By Martin M. Zoltick & Michael H. Jones on
Posted in Appellate Decisions
Yesterday, the U.S. Supreme Court issued two important decisions relating to inter partes review (IPR) proceedings before the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (PTO).
Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, U.S., No. 16-712, 4/24/2018
In Oil States, the Supreme Court ruled…
How Creative is One of Ordinary Skill – DSS Tech. Mgmt. v. Apple Inc.
By John D. Higgins on
Posted in Appellate Decisions
In an attempt to challenge the patentability of an issued claim, petitioners every so often come across a prior art reference that discloses all the recited features of the claim at-hand except for one limitation. Rather than bringing in another reference to teach that one limitation, petitioners sometimes merely refer to the knowledge and creativity…
Miami International Holdings Files Nearly Half of CBM Petitions Filed So Far This Year
By Spencer J. Johnson on
Posted in About the PTAB
Making up only around 7% of post-grant trials at the PTAB (according to statistics released by the USPTO from February 2018), the number of petitions for Covered Business Method (“CBM”) reviews has experienced a decline every year since its peak in 2014. With 34 filings in 2017,[1] the 16 filed so far this year…
Do Nidec Motor Corp. and Wi-Fi One Foreshadow an End to Self-Joinder in Inter Partes Review Proceedings?
By D. Lawson Allen on
Posted in About the PTAB
Section 315(c) of the America Invents Act (“AIA”) provides that if the Director of the U.S. Patent and Trademark Office (“USPTO”)
institutes an inter partes review, the Director, in his or her discretion, may join as a party to that inter partes review any person who properly files a petition under section 311 that the…