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
SAS Institute
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…
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…