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The USPTO Re-Explains What “Means” Means

On March 18, 2024, the United States Patent and Trademark Office (USPTO) issued a Memorandum containing guidance to help patent examiners analyze claim language that may be interpreted as “means-plus-function” or “step-plus-function” language under 35 U.S.C. § 112(f). The USPTO said that the Memorandum was not a change in practice for examiners. Sometimes, however, how something … Continue Reading

The USPTO Speaks on Obviousness – Do Patent Practitioners Have an Answer?

The United States Patent and Trademark Office (USPTO) recently published updated guidance emphasizing a very flexible approach to determining obviousness under 35 U.S.C. § 103, consistent with the U.S. Supreme Court’s opinion in KSR v. Teleflex. The guidelines are written for USPTO personnel but combined with the Manual of Patent Examining Procedure (MPEP), they provide … Continue Reading

Proactive Strategies in IPRs after Allgenesis

A recent Federal Circuit decision, Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC, provides some interesting insights into patent challenge strategies, and their consequences, when a potentially infringing product is not yet on the market. Allgenesis, which has been developing a pterygium treatment product using nintedanib, filed an inter partes review (IPR) petition to try to … Continue Reading

Rulemaking at the US Patent Office: Does Director Guidance On Discretionary Denials of Review Require Opportunity for Public Comment?

The Federal Circuit has refused to uphold the dismissal of a complaint alleging that the Director of the Patent and Trademark Office (PTO) improperly issued instructions to PTAB judges regarding whether to institute requested patent review proceedings. The complaint alleges that the so-called Fintiv factors – initially set forth in two opinions designated by the … Continue Reading

ITC Section 337: Tips for Avoiding Discretionary Denials at the PTAB

We previously wrote that a co-pending ITC Section 337 investigation virtually guarantees that the Patent Trial and Appeal Board (PTAB) will exercise its discretionary power to deny institution under 35 U.S.C. §§ 314(a) and 324(a) when considering a petition for inter partes review (IPR) or post-grant review (PGR). See ITC Section 337: Kiss of Death … Continue Reading

ITC Section 337: Kiss of Death for PTAB Proceedings

When considering a petition for post-grant review (PGR) or inter partes review (IPR), the Patent Trial and Appeal Board (PTAB) has discretion to deny institution under 35 U.S.C. §§ 314(a) and 324(a). The PTAB’s Consolidated Trial Practice Guide provides that, when exercising its discretion, the Board may consider “events in other proceedings related to the … Continue Reading

Will Patents Become More Political? The PTO Begins to Implement Arthrex

In United States v Arthrex, the Supreme Court held that 35 U.S.C. §6(c), which sets forth the authority of Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”), is unconstitutional because APJs effectively wield the power of principal officers (who require Senate confirmation) while being appointed as inferior officers (who do not require Senate confirmation) … Continue Reading

The Supreme Court Provides a Different Fix to Make APJs Inferior Officers

On June 21, 2021, in United States v. Arthrex, the United States Supreme Court ruled that Patent Trial & Appeal Board (“PTAB”) Administrative Patent Judges (“APJs”) are unconstitutionally appointed because they effectively wield the power of principal officers while being appointed as inferior officers. 594 U.S. ____ (2021).… Continue Reading

Beware! Reliance on Aspirational and Futuristic Statements in a Prior Art Reference May Require Supporting Evidence

In patent disputes involving complex technologies, especially when the disputed patent was developed in an early stage of the technical field, research papers and similar publications are oftentimes relied on to make obviousness-based invalidity challenges. It is common for such research papers to include predictions or aspirations with regards to potential future developments in the … Continue Reading

Restoring Balance: Increased Discretionary Authority of the PTAB Favors Patentees

The Patent Trial and Appeal Board (PTAB) is an administrative law body of the US Patent and Trademark Office (USTPO) that determines disputes over the issuance, reissuance, and cancellation of patent claims. The PTAB has become well known to patent litigants since the implementation in 2012 of new proceedings, including Inter Partes Review (IPR), for … Continue Reading

Discretionary Denial of Institution of an IPR Disfavored Where Litigation Already Stayed or Petitioner Stipulates to Estoppel

In 2020, the PTAB increasingly denied otherwise meritorious petitions for review under its discretionary authority, as my partner Steve Auvil and I recently discussed. Many such denials were made in view of co-pending litigation under the so-called Fintiv factors adopted last May. The reaction to the PTAB’s approach was vocal and divided, and the USPTO … Continue Reading

The PTAB Informs: Applying Apple v. Fintiv

On July 13, 2020, the Patent Trial and Appeal Board (PTAB or Board) designated as informative two opinions applying its now precedential Apple Inc. v. Fintiv, Inc. opinion, which set forth factors governing the exercise of the PTAB’s discretion to deny institution of a post-issuance proceeding. In these two informative opinions, Apple Inc. v. Fintiv, … Continue Reading

LEAP into Practice Before the PTAB

As most attorneys know, effective communication is essential in protecting and advocating for clients, but gaining oral advocacy experience sometimes takes years. For patent attorney and agents, this experience can come before the Patent Trial and Appeal Board (PTAB). In an effort to encourage less senior patent attorneys and agents to gain this valuable experience, … Continue Reading

When the PTAB Weighs Evidence of Secondary Considerations, Volume Matters

As discussed in a prior blog post here, the United States Patent and Trademark Office (“USPTO”) Patent Trial and Appeal Board (“PTAB”) designated a recent decision on secondary considerations as precedential.[1] At the same time, the PTAB designated two older decisions as informative. While the precedential decision of Lectrosonics focused largely on the nexus requirement … Continue Reading

PTAB Time-Bar Determinations Under 35 U.S.C. §315(b) Are Final and Not Appealable

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

Secondary Considerations at the PTAB: Nexus Required, but Amendments Allowed

The Supreme Court recognized long ago that a patentee can overcome a prima facie showing of obviousness by presenting objective evidence of non-obviousness, referred to as secondary considerations.[1] To do so, however, the patentee must establish a nexus between the challenged claims and the objective evidence. In a newly designated precedential decision, Lectrosonics, Inc. v. … Continue Reading

It’s Printed, but Is It Published? More Informative Guidance from the PTAB

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

A “Printed Publication” in a Pending Patent Application May Not Be a “Printed Publication” in an IPR

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
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