PTAB Master Class Tomorrow!
Tomorrow, the PTAB Bar Association will kick-off its annual conference. The conference will bring together practitioners, in-house counsel, and members of the bench for a dynamic discussion of Patent Trial Appeal Board (PTAB) best practices, recent
Continue Reading PTAB Bar Annual Meeting This Week
AIA Revisited
With last week’s 10-year anniversary of the Leahy-Smith America Invents Act (AIA), and Senator Leahy still a powerful voice on the Senate Judiciary Committee, the timing may be right to refine the decade old statutes. Indeed, over the
Continue Reading The AIA at 10 — Congress Considers a Tune Up?
The Return of In-Person IP Conferences
In the words of princess Elsa…for the first time in forever….there are a number of in-person IP conferences slated for this fall. (I’ve been cooped up with kids, I make Frozen references now)
Court Holds Fact Finders May Compare Document Versions
Over the years, the Federal Circuit has faulted the PTAB for overly rigid printed publication analysis. A recent Federal Circuit decision has provided further guidance on how the PTAB should determine
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CAFC Says “No”…Ninth Circuit Says “Yes”
Under 35 U.S.C. § 285, a prevailing party in a patent infringement dispute may be awarded reasonable attorney fees in “exceptional cases.” I’ve previously discussed the contours of what constitutes an “exceptional” case based
Continue Reading Circuits Split on PTAB Fees Being Recoverable Under 285
Study Shows Bio/Pharma Patents Fare Better at PTAB
A few years back, the Patent Trial & Appeal Board (PTAB) released a study showing the outcome of proceedings directed to so-called “Orange Book” patents. That study demonstrated that Orange book/Biologic
Continue Reading Bio/Pharma Patents Fare Best at PTAB
Settlement Prior to Trial Institution May Not Require Filing of Settlement Documents
Back in 2015, I pointed out that an opinion of the Federal Circuit called into question the PTAB’s practice of requiring settlement documents to terminate an AIA trial
Continue Reading PTAB Changes Settlement Requirements?
Director Adopts Panel Opinion
A few weeks back, I explained that the new Arthrex rehearing option— to the Director of the USPTO —was a non-event for practitioners. Reason being, the Director cannot just unilaterally reverse decisions “just because” he/she
Continue Reading Director Rehearing Decisions: No Path for Delay
Unpacking the Importance of the Claimed Invention from Other Commercial Components
Objective indicia of non-obviousness, such as commercial success and industry praise, can be probative evidence of non-obviousness. In order for the objective evidence of secondary considerations to be afforded
Continue Reading PTAB Faulted on Objective Indicia Analysis
What is “Materially Identical?”
The doctrine of issue preclusion can prevent an issue previously litigated at the PTAB from being re-litigated in a later proceeding, such as in the district court. In order for issue preclusion to apply, a “materially
Continue Reading PTAB Decisions & Issue Preclusion
