On July 6, 2020, in Hunting Titan, Inc. v. Dynaenergetics Europe GMBH, a Precedential Opinion Panel (POP) of the Patent Trial and Appeal Board (PTAB or Board) granted a patent owner’s motion to amend, after the Board denied the motion in an August 2019 Final Written Decision. This was only the fourth such decision since … Continue Reading
Earlier this month, we provided posts here and here, outlining the United States Patent and Trademark Office’s (“USPTO”) announcement of the availability of certain deadline waivers to help patent and trademark applicants and owners file papers during the COVID-19 outbreak. The original notice granted a 30-day extension on certain deadlines falling between March 27 and … Continue Reading
Yesterday, in Thryv, Inc., f/k/a Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., the U.S. Supreme Court ruled 7-2 that the non-appealability of Patent Trial and Appeal Board (PTAB) institution decisions encompasses PTAB decisions on whether a statutory time bar applies. More specifically, 35 U.S.C. §314(d), which sets forth the finality and nonappealability of … Continue Reading
In prior blog posts here and here, we explored various aspects of the Patent Trial and Appeal Board’s (“PTAB”) analysis of documents as printed publications during patent examination and inter partes review (“IPR”). The PTAB’s Precedential Opinion Panel (“POP”) has been busy reviewing various decisions in this area, and recently designated four of them as … Continue Reading
The Answer Is Yes In Keith Mfg. Co. v. Butterfield,[1] decided April 7, 2020, the Federal Circuit held that, where parties stipulate to dismiss a case with prejudice, a party still can move for attorney’s fees. The court distinguished this stipulated dismissal situation from the one in Microsoft Corp. v. Baker,[2] in which a single … Continue Reading
In a newly-designated precedential decision, Ex parte Grillo-López, Appeal 2018-006082 (Jan. 31, 2020) (designated Apr. 7, 2020 as Precedential), the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) differentiated the procedures in a pending patent application and an Inter Partes Review (“IPR”) proceeding for establishing whether a document qualifies as … Continue Reading
In Myco Industries, Inc. v. BlephEx, LLC,[1] decided April 3, 2020, the Federal Circuit reversed a district court’s preliminary injunction which forbade a patent owner from accusing others of patent infringement. The Federal Circuit found a lack of a finding of bad faith in the patent owner’s accusations of infringement. The Federal Circuit also found … Continue Reading
The recent passage of the massive Coronavirus Aid, Relief, and Economic Security (“CARES”) Act by Congress authorized the United States Patent and Trademark Office (“USPTO”) to temporarily adjust its statutory time periods for replies and fees to help applicants file during the COVID-19 outbreak. With countless individuals and businesses significantly impacted by the growing pandemic, … Continue Reading
Following the Patent Trial and Appeal Board’s (PTAB) Precedential Opinion Panel’s selection of Hulu, LLC v. Sound View Innovations, LLC[1] as precedential, on January 23, 2020, the PTAB issued a non-precedential decision in Cisco Systems, Inc. v. Centripetal Networks, Inc.[2] In Cisco, the PTAB provided yet more discussion of criteria for determining whether a printed … Continue Reading
In a decision that will delight patent applicants, on December 11, 2019, the U.S. Supreme Court decided Peter v NantKwest, Inc.[1], holding that the US Patent and Trademark Office (USPTO) was not entitled to recover pro rata salaries for legal staff (in the context of the USPTO, attorney’s fees) as “expenses” in district court litigation. … Continue Reading
Introduction In two recent articles (see parts one and two of series), we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[i] This article completes that discussion, addressing motions for joinder, and procedures regarding remands and the PTAB’s default protective order. 1. Motions for joinder … Continue Reading
Introduction In a recent article, we discussed several aspects of a July 2019 Update that the Patent Trial and Appeal Board (PTAB) issued to the PTAB Trial Practice Guide.[1] This article continues that discussion, addressing institution decisions on multiple petitions, and motions to amend. 1. Multiple petitions challenging the same patent The July 2019 Update … Continue Reading
Introduction In July 2019, the Patent Trial and Appeal Board (PTAB) issued an Update to the PTAB Trial Practice Guide.[i] The July 2019 Update documents practices and procedures that the PTAB has found useful, and in some instances, summarizes or repeats practices and procedures from precedential PTAB opinions. The US Patent and Trademark Office’s announcement … Continue Reading
In post-patent issuance proceedings before the US Patent and Trademark Office (USPTO) – inter partes review (IPR), covered business method (CBM), and post-grant review (PGR) – parties almost invariably submit expert testimony. Depending on the type of post-issuance proceeding, the testimony can relate to prior art, claim construction, patent-eligibility, or formal requirements for patentability including … Continue Reading
You are the CEO of a startup company with lots of inventive ideas, and the company is applying for patents. Patent counsel tells you there are fees to pay to the US Patent and Trademark Office (USPTO) in connection with the company’s patents, and that the fees depend on whether your company is a “large” … Continue Reading
