In a relatively difficult month for patent owners, the Patent Trial and Appeal Board issued 27 IPR and CBM Final Written Decisions in November, including decisions following remands from the Federal Circuit, cancelling 335 (87.47%) instituted claims while declining to cancel 48 (12.53%) instituted claims.  Patent owners did not concede any instituted claims through motions to amend or disclaimer in cases reaching a final decision.  For comparison, the cumulative average rate of instituted claims cancelled…

The United States Patent and Trademark Office (“USPTO”) cannot recover the salaries of its legal personnel in actions under 35 USC § 145. The Supreme Court came to that conclusion in Peter v. NantKwest, Inc., No. 18-801 (Dec. 11, 2019)—the Court’s second opinion of this year’s term. A patent applicant dissatisfied with the USPTO’s decision has two statutory methods of appeal: she may appeal directly to the Federal Circuit or she may file a new…

The Patent Trial and Appeal Board issued 29 IPR and CBM Final Written Decisions in October, including decisions following remands from the Federal Circuit, cancelling 395 (79.80%) instituted claims while declining to cancel 100 (20.20%) instituted claims.  Patent owners did not concede any instituted claims through motions to amend or disclaimer in cases reaching a final decision.  For comparison, the cumulative average rate of instituted claims cancelled in IPR and CBM Final Written Decisions is…

In its landmark decision in Oil States Energy Servs., LLC v. Greene’s Energy Grp., 138 S.Ct. 1365 (2018), the Supreme Court held that post-grant proceedings under the AIA violated neither Article III nor the Seventh Amendment. But the Court expressly did not answer whether a party could successfully challenge those proceedings on takings or due process grounds—or challenge their retroactive application. In its recent petition for writ of certiorari, it appears Collabo Innovations has asked…

If the Patent Trial and Appeal Board (PTAB) determines that a petitioner has filed its IPR petition too late, can the petitioner appeal that determination? The Supreme Court will answer that question this term in Thryv, Inc. v. Click-to-Call Techs., L.P., No. 19-916. The case involves two statutory provisions. The first is a time bar: under 35 U.S.C. § 315(b), an IPR cannot be instituted if the petitioner files its petition more than 1 year after…

The AIA provides that a patent owner may file a motion to amend a patent during the course of an IPR, PGR, or CBM proceeding under 35 U.S.C. §§ 316(d)(1) or 326(d)(1) by cancelling a challenged patent claim or by proposing a reasonable number of substitute claims.  On October 21, 2019, the USPTO announced a notice of proposed rulemaking, which provides modifications to the rules for motions to amend. Specifically, the PTAB adds the requirements…