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A recent Federal Circuit opinion held that state sovereignty does not shield states from  inter partes review (“IPR”) before the Patent Trial and Appeal Board (the “Board”). Regents of the Univ. of Minn. V. LSI Corp., No. 2018-1559 (Fed. Cir. June 14, 2019) (opinion available here). This decision is another strike against sovereign…

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…

The Supreme Court of the United States issued a ruling today in Return Mail, Inc. v. Postal Service, 587 U.S. ___ (2019), holding that the United States Government is not a “person” eligible to petition for covered-business-method (“CBM”) review, inter partes review (“IPR”), or post-grant review (“PGR”) America Invents Act (“AIA”) proceedings before the…

Between March 7 and April 5, 2019, the Patent Trial and Appeal Board (“the PTAB” or “the Board”) designated a series of decisions as either “precedential” or “informative.”  As part of its revised standard operating procedures (SOP2), the PTAB may designate an otherwise routine decision as precedential—a binding authority in subsequent matters involving similar facts…

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…

Last week, the first Precedential Opinion Panel (“POP”) entered a decision examining the scope of joinder available under 35 U.S.C. § 315(c). Proppant Express Investments, LLC v. Oren Techs., LLC, Case IPR2018-00914, Paper 38 (Mar. 13, 2019). The POP made two determinations about the statutory authority of the Patent Trial and Appeal Board (“the…

On March 5, 2019, the USPTO hosted a rare and special event in recognition and celebration of female inventors and the contributions of women in science, technology, engineering, and mathematics (“STEM”). The celebration commenced with opening remarks from Laura A. Peter, Deputy Director of the USPTO, followed by keynote speeches from Congresswoman Martha Roby, Secretary…

On January 24, 2019, the PTAB denied institution of inter partes review (“IPR”) in Deeper, UAB v. Vexilar, Inc., Case IPR2018-01310 (PTAB Jan. 24, 2019) (Paper 7). The PTAB exercised its discretion to deny institution despite finding that Deeper demonstrated a reasonable likelihood of success in prevailing as to two of the twenty-three claims…

The United States government is currently in a partial shutdown due to a lapse in appropriated funding for a portion of the federal government.  The partial shutdown began on December 22, 2018, and is currently in its fifth week.  Two government organizations affected by the shutdown are (i) the Department of Commerce, which includes the…

The Patent Trial and Appeal Board (“the PTAB” or “the Board”) is preparing for its first instance of the newly created Precedential Opinion Panel (POP). Proppant Express Invs., LLC v. Oren Techs., LLC, IPR2018-00914, Paper 24 (PTAB Dec. 3, 2018).  Interested parties may have had a busy holiday season, because initial briefing was due…