The PTAB’s Motion to Amend Pilot Program, offering a revamped and more robust opportunity for amendment to patent owners during America Invents Act (“AIA”) trials, was launched well over a year ago in March of 2019. On July 15, 2020,
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Federal Circuit PTAB Appeal Statistics Through May 31, 2020
Through May 31, 2020, the Federal Circuit decided 740 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 541 (73.11%) cases and reversed or vacated the PTAB on every issue in 101 (13.65%)…
Two PTAB Decisions Applying Fintiv Factors Designated Informative
The PTAB has discretion to deny inter partes review under 35 U.S.C. § 314(a). In a now-precedential decision—Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)—the Board set forth six non-dispositive factors intended to guide that discretionary…
Precedential Opinion Panel Exercises Restraint in Deciding Not to Review New Grounds of Unpatentability
On July 6, 2020, the Precedential Opinion Panel (“POP”) held that the Board may raise a new ground of unpatentability against substitute claims in a motion amend, even when a petitioner does not advance or insufficiently develop that ground—but that…
PTAB Designates Four Decisions Precedential or Informative
On June 11, 2020, the Patent Trial and Appeal Board designated as precedential a decision regarding when agreements collateral to settlement must be disclosed under 35 U.S.C. § 317(b). The Board also designated as informative three decisions: one instituting post-grant review…
IPR and CBM Statistics for Final Written Decisions Issued in April 2020
The Patent Trial and Appeal Board issued 37 IPR and CBM Final Written Decisions in April, including decisions following remands from the Federal Circuit, cancelling 316 (69%) instituted claims while declining to cancel 142 (31%) instituted claims. Patent owners did…
U.S. Patent Office’s Proposed Rule Changes to AIA Trial Practice
On May 27, 2020, the U.S. Patent Office published a notice of proposed rulemaking to the rules of practice in IPR, PGR, and CBM proceedings as follows:Read more
Federal Circuit PTAB Appeal Statistics Through April 30, 2020
Through April 30, 2020, the Federal Circuit decided 718 PTAB appeals from IPRs and CBMs. The Federal Circuit affirmed the PTAB on every issue in 524 (72.98%) cases and reversed or vacated the PTAB on every issue in 100 (13.93%)…
PTAB Designates Decision on Discretionary Denial as Precedential
The PTAB has discretion to decline to institute an inter partes review for many reasons, including if a parallel district court proceeding is ongoing. In Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020)—designated precedential on May…
Red Diamond, Inc. v. Southern Visions LLP, PGR2019-00045: Window Into How the PTAB’s Pilot Program Concerning Motion to Amend Practice Operates
On April 19, 2019, Red Diamond requested post-grant review (“PGR”) of claims 13, 18, and 19 of U.S. Patent No. 10,071,852, directed to beverage brewing products. In Red Diamond, Inc. v. Southern Visions LLP, PGR2019-00045, Paper 9 (P.T.A.B. Oct. 15,…